Patent Law Blog (Patently-O)

Patently-O Bits & Bytes by Lawrence Higgins

USPTO Patent Externship

• The USPTO will be accepting application for their patent externship until February 29. Last year there were about 200 students who participated in the program. The program will last anywhere from 8-10 weeks and is at the USPTO headquarters in Alexandria, Virginia. This is a great opportunity for anyone who wants to work in the patent field. [Link]

Chisum Patent Academy

• The Chisum Patent Academy will hold its next Intensive Patent Law Training Seminar in New York City on Feb. 22-24, 2012. Topics to be addressed include the America Invents Act of 2011, recent nonobviousness decisions, inequitable conduct post-Therasense, and the continuing schism in the Federal Circuit over patent claim construction. The Chisum Patent Academy offers what CLE providers and patent bar review courses simply can't: premium-quality patent law education in a unique seminar-style setting. Co-taught by leading patent law scholars Donald Chisum and Janice Mueller, the intensive three-day seminars are limited to ten (10) participants and conducted in roundtable, interactive style. [Link]

Patent Jobs:

• Stoel Rives is searching for an associate attorney with 3-5 years of experience in patent prosecution and an EE background to work at their Salt Lake City office. [Link]
• Weaver Austin Villeneuve & Sampson is seeking a patent attorney with 3-5 years of experience and a background in EE to work at their Oakland office. [Link]
• Schwegman, Lundberg & Woessner is looking for patent attorneys with 2+ years of experience or 5+ years of experience if telecommuting. [Link]
• Holland & Knight is searching for 2 IP litigation associates with 4-6 years of experience to work at their Boston or Chicago offices. [Link]
• Howard & Howard is seeking IP associates with 4-8 years of experience of patent prep experience to work at their Royal Oak, Michigan office. [Link]
• Armstrong Teasdale is looking for patent attorneys with 2-6 years of experience to work in one of their offices. [Link]
• Pramudji Law Group is searching for a patent agent/attorney/engineer with at least 2 years of patent experience to work at their Houston office. [Link]
• Shook, Hardy & Bacon is seeking a litigation associate with 3-4 years of litigation experience work in their Kansas City office. [Link]
• Paul Hastings is searching for a patent litigation associate with a computer science degree and experience with patent litigation to work in their Atlanta office. [Link]
• Krieg DeVault is looking for an IP associate with 3-7 years of experience to work in their Indianapolis office. [Link]
• UTC Power is searching for an IP paralegal with 2-4 years of IP experience to work at their South Windsor, Connecticut location. [Link]
• Fennemore Craig is seeking an experienced patent attorney to work in their Phoenix or Denver office. [Link]
• Gore Medical Products is searching for an IP technical specialist to work at their Flagstaff location. [Link]
• Wells St. John PS is looking for a patent attorney with 4+ years of experience in all aspects of IP practice to work at their Spokane office. [Link]
• Sutherland is seeking a patent associate/agent with 2-5 years of experience and a degree in chemical engineering to work at their Atlanta office. [Link]

Upcoming Events:

• IBC Legal's 20^th Annual Biotech & Pharmaceutical Patenting Conference 2012 will be held on February 21-22 in Munich, Germany. Get advice and analysis from a diverse team of international life science and IP experts on recent case law and developments, patent filing, patent life cycles, SPCs, patent infringement, EC Bolar implementation and more! Patently-O readers get a 10% discount when registering with this link. [Link]
• Fitch, Even, Tabin & Flannery LLP will present a free one-hour CLE webinar, "Patent Reexaminations in Parallel with Litigation," on February 22, 2012 at 12 noon EST. Joseph E. Shipley will discuss the factors that should be considered in deciding whether to seek reexamination as an alternative or adjunct to litigating patent validity in the federal courts. Topics will include what can and cannot be achieved in reexamination, current statistics on outcome, associated risks and costs, time frames, and reexamination options and alternatives. The upcoming new USPTO procedures--Post-Grant Review and Inter Partes Review--will also be covered. [Link]
• The 7^th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 in London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]
• Maurer School of Law Center for IP Research will hold a CLE Fundamentals of Federal Circuit Advocacy event on February 23. Greg Castanias will lead a discussion of patent appeals before the Federal Circuit. Also appearing: Center for Intellectual Property Research senior advisor Donald Knebel, Prof. Mark D. Janis, and former Federal Circuit clerk Allison Kerndt. [Link]
• The Florida Bar 3^rd Annual IP Law Symposium will be held on March 1-2 on Orlando. The IP Symposium will address recent developments and important issues in IP law, including: Perspectives on the America Invents Act, Copyright Law and the First Sale Doctrine, Third Party Liability in IP, Enforcing IP on the Internet, Latest Developments in Patent, Trademark, and Copyright Law, and Recent Developments at the TTAB. Guest speakers include; Anne Gilson LaLonde, Scott Bain, John Welch, and many others. [Link]
• Section 101 Gatekeepers: Finding the Patentable Subject Matter Line in a Judicial Sandstorm, webinar will be hosted by AIPLA on March 7. The webinar will be presented by Professor Christopher Holman and attorney Robert H. Fischer. [Link]
• LES (USA & Canada) 2012 Winter Meeting will be held March 12-14 in Anaheim, CA. The meeting will focus on cutting-edge issues in the high tech space with overlapping content in related industries, including clean tech, nanotech, and medical devices. Featured speakers include Honorable Randall Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit; Catherine Casserly, CEO, Creative Commons; and Patrick Ennis, Head of Global Technology, Intellectual Ventures. Patently-O readers save $100 with code PO1. [Link]
• C5's 22 Forum on Biotech Patenting conference will take place March 14-15 in Munich, Germany. The conference brings together experienced in-house counsel from both innovator and generic pharma and biotech companies and their expert legal advisors from various jurisdictions across the globe. Session will cover the patentability of gene sequence patents in Europe and the US, current developments on biotech products and patent considerations for bio-deposits, and many other sessions. (Patently-O readers register with PO 10 for a discount). [Link]
• American Conference Institute's FDA Boot Camp conference is scheduled for March 20-21 in New York, NY. ACI's FDA Boot Camp has been designed to give products or patent litigators, as well as patent prosecutors, industry in-house counsel, and life sciences investment and securities experts, a strong working knowledge of core FDA competencies. (Patently-O readers register with PO 200 for a discount). [Link]
• American Conference Institute's PTO Procedures Under the America Invents Act conference is scheduled for March 26-27 in New York, NY. This conference will serve as a practical and tactical guide for PTO practice post-Patent Reform. (Patently-O readers register with PO 200 for a discount). [Link]
• The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant's strategy for entering the market. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

By Dennis Crouch

Tomorrow (Feb 16), I will be speaking at Professor Rantanen's home institution – the University of Iowa College of Law. Our session runs from 3:30 to 5:00 pm and will include additional commentary from Professor Rantanen and patent attorneys Jay Hamilton, Ryan Carter, Michael Gilchrist and Christopher Voci.

The public is welcome. I look forward to seeing you there and discussing issues of patent law reform. [LINK]

Senate Confirms Evan Wallach as Next Federal Circuit Judge

In a unanimous vote, the Senate has confirmed President Obama's nomination of Judge Evan Wallach as Circuit Judge on the Court of Appeals for the Federal Circuit. In the mid-1990's Wallach was appointed by President Clinton as an Article III judge on the U.S. Court of International Trade (CIT) – handling disputes regarding import transactions and federal statutes affecting international trade. Although the court has limited subject matter jurisdiction, the CIT otherwise has general legal and equitable powers. Judge Wallach is already familiar with Federal Circuit judges and Federal Circuit practice because CIT decisions are appealed to the Federal Circuit. In addition to his work in international trade, Judge Wallach is recognized as a leading expert on the international law of war. During a decade of private practice, Wallach represented business and media interests at the Las Vegas firm of Lionel Sawyer. He is a Vietnam War veteran (army) and later served as a Judge Advocate General. In the 1980's Wallach also served as counsel for Senator Harry Reid. He holds degrees from Arizona (Journalism), Berkeley (JD), and Cambridge (LLB).

While Judge Wallach does not have extensive experience handling patent law issues. He did preside over a two-week patent infringement jury trial in Nevada. Mikohn Gaming Corp. v. Acres Gaming Inc., No. CV-S-97-1383 (D. Nev. Aug. 2, 2001).  In that case, the jury found the patent infringed and awarded $1.5 million in damages.

In his responses to questions from the Senate, Judge Wallach indicated his view that the “most important attribute of a judge” is: “Commitment to fundamental rule of law principles, including predictability, uniformity, transparency, neutrality and stare decisis.”

• Tony Dutra and Matt Osenga write more

Patently-O Bits & Bytes by Lawrence Higgins

Apple v. Samsung

• Christopher Carani recently wrote an article about the Apple v. Samsung smartphone war. In the article, Carani provides the facts and background necessary to understand the current design patent dispute and offers insight into the merits along with potential outcomes. For example, Carani writes that Judge "Koh may find that Apple has not met its burden on validity at this stage of the case and deny the motion for preliminary injunction with respect to all patents." The article is a great source for information about the exciting smartphone battle between the top two smartphone makers in the world. [Link]

Spangenberg Family Foundation

• The Spangenberg Family Foundation gave Case Western University School of Law a $2 million gift to endow the Spangenberg Family Foundation Chair in Law and the Arts. Eric Spangenberg is the founder and chairman of Dallas-based IP Navigation Group, a patent monetization company.

IP Hall of Fame

• The process to find inductees into the IP Hall of Fame for 2012 is currently underway. The IP Hall of Fame enables the IP community to honor individuals from business, politics, the law, finance, academia and anywhere else, who have made a significant contribution to IP. Any member of the IP community can make a nomination, and all nominations will be considered by the IP Hall of Fame Academy. [Link]

Executive Director

• The Engelberg Center on Innovation Law and Policy at New York University School of Law is seeking applicants for the full-time position of Executive Director. They seek an Executive Director with an entrepreneurial approach who would be an engaged participant in formulating and implementing an ongoing vision for the Center's programs in competition, innovation, and information law. Specific duties will be determined in consultation with the Center's faculty directors, but should be expected to include: developing a policy-oriented research agenda, preferably in a way that could involve students, fundraising for the Center from industry, foundation, or government sources, and planning conferences and other events (with the help of the center's administrator). More information about the Center and its activities is at [Link].

Applications should be emailed by December 10, 2011, to Nicole Arzt, nicole.arzt@nyu.edu, and should include: a cover letter, curriculum vitae, copies of any publications or other relevant writing, and the names and contact information of three references.

Patent Jobs:

• Roberts Mlotkowski Safran & Cole is searching for an IP attorney with 2-4 years of patent prosecution experience and a degree in EE. [Link]
• Roberts Mlotkowski Safran & Cole is seeking an IP attorney with 2-4 years of patent prosecution experience and a chemical or chemical engineering degree. [Link]
• iRobot is looking for a patent agent with 5-8 years of experience. [Link]
• Greenblum & Bernstein is seeking a patent associate with an EE or CE background and 2-3 years of experience. [Link]
• Steptoe & Johnson is searching for IP associates with a minimum 4 years of experience in litigation and a technical background. [Link]
• Fiala & Weaver is looking for a patent attorney/agent with 1 or more years of experience. [Link]
• Myers Wolin is seeking a partner level attorney (patent or trademark) or small practice group. [Link]
• Edell, Shapiro & Finnan is searching for associates with backgrounds in EE or mechanical engineering. [Link]
• The IP group of Sutherland is seeking a patent agent with 1-3 years of experience and a chemical engineering degree. [Link]

Upcoming Events:

• The ITC Trial Lawyers Association Annual Meeting will be held on November 9^th in Washington D.C. Guest speakers includes Deanna Okun and former Chief Administrative Judge Luckern. [Link]
• World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
• IBC will hold a Standards and Patents Conference in London on November 16^th & 17^th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
• IBC will hold a US Patent Reform Congress Conference on November 18^th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
• The American Conference Institute's 2^nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7^th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]
• IBC Legal is holding a conference on International Patent Litigation 2011 in London on December 7^th-8^th. Use VIP Code FKW82249PO to get a 10% discount. [Link]
• The WSBA IP Section, WSPLA, IEEE IP Professional Initiative, and the University of Washington School of Law's Law, Technology & Arts Group will be presenting an all-day CLE at the University of Washington School of Law on Friday, December 9, 2011 on the impacts of the America Invents Act.

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

This week in patent law class

• This week in patent law class: Left my students confused after discussing Benson, Flook, Chakrabarty, Diehr, and Bilski. I'm somewhat confused as well.
• Traditionally, a patentee could seek reissue to correct problematic claims if the problems were created “through error without any deceptive intention.”  The new patent act eliminates the “without any deceptive intention” limitation. What's the impact?

-Dennis Crouch

Patently-O Bits & Bytes by Lawrence Higgins

Samsung v. Apple: The Battle Continues

• A Netherland court recently denied Samsung's request for an injunction banning Apple from selling iPhones and iPads. Samsung claims that Apple should not be allowed to sell devices with 3G technology because they infringe Samsung patents. The court stated that because the 3G technology is the industry standard, Samsung is obliged to offer Apple licenses under fair, reasonable, and nondiscriminatory (FRAND) terms. It seems that the licensing fee Samsung sought was not a FRAND offer and that if Samsung does make a FRAND offer and for some reason an agreement is not reach Samsung may file another patent suit and ask for a new injunction request. [Link]

UK IPO

• Those who couldn't make it along to the UK IPO's event "Understanding the Use and Impact of Design Rights on the Design Sector" hosted by the Designs Council on 21 September 2011 can either listen to the presentations or download Word-format transcripts from this webpage. The event was a presentation of the economic research conducted for the IPO by the researchers, moderated by an expert panel and followed by a lively discussion. The research itself is published here. [Link]

Taiwan Will Form Patent Bank

• The quasi-government agency, the Industrial Technology Research Institute (ITRI) announced the bank, saying it could be similar to existing defensive patent aggregators such as RPX and Allied Security Trust. The director of ITRI stated that the bank will assist Taiwanese manufactures with the creation of patent portfolios and patenting strategies during the manufactures' R&D periods and later assist in defending them from suits and in expanding their market share. HTC is a Taiwan based company, who has been in a heated patent infringement battle against Apple, and it would be to their advantage for an IP bank like this. [Link]

Patent Jobs

• King & Spalding is searching for a patent attorney with 1-2 years of experience to work at their Houston office. [Link]
• McDonnell Boehnen Hulbert & Berghoff is seeking a junior associate with 2-3 years of experience, to work in their electrical arts group. [Link]
• Rambus is seeking a Senior Patent Counsel with 8+ years of experience and a BSEE or related degree. [Link]
• Sheppard Mullin is searching for 2 attorneys: (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
• The University of New Hampshire School of Law's Franklin Pierce Center for IP is seeking to hire a full-time professor of patent prosecution practice. [Link]

Upcoming Events:

• The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
• Back to School: The New Patent Law Explained, conference will be hosted by Berkeley Center for Law and Technology on October 21 in Berkeley, California. Professors and practitioners will provide detailed explanations of the changes and discuss the impact on patent prosecution, counseling, and litigation. [Link]
• American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25^th-October 26^th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
• The University of Texas at Austin will hold its 16^th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
• Whittier Law School's Center for IP Law and Law Review will host the 29^th Annual Law Review Symposium: The Law of the Smart Phone on November 3^rd. The symposium will feature presentations and panel discussions devoted to the privacy, regulation, economics, and intellectual property issues surrounding smart phone technology. Guest speakers include, Gerald Faulhaber, Mark Roark, Alan Friel, Susan Freiwald and many others. [Link]
• IPMI is holding the IP Law & Management Institute on November 6^th – 8^th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
• World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
• IBC will hold a Standards and Patents Conference in London on November 16^th & 17^th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
• IBC will hold a US Patent Reform Congress Conference on November 18^th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
• The American Conference Institute's 2^nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7^th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Where Will the Patent Satellite Offices Open!

• There currently is a lot of lobbying going on by politicians to bring the USPTO to their state. Lawmakers from Silicon Valley, Colorado and Texas are trying to win one of the two satellite offices, since Detroit already is entitled to an office under Leahy-Smith. Colorado Sens. Michael Bennet and Mark Udall, sent a letter to David Kappos trying to sell him on the Rocky Mountain State. Also California lawmakers Anna Eshoo and nine other from sent a letter to Obama making their pitch for Silicon Valley. [Link]
  

Beacon Navigation Files Suit Against Car Makers

• On October 11^th Beacon Navigation filed patent infringement suits against all the big name automobile manufactures. Beacon claims that automobile manufactures infringed either all or some of their patents including 5,819,201, 6,163,269, & 5,878,368. Beacon claims that because the GPS navigation systems in their products are specially adapted for an infringing use of each patent, and embody a material part of the inventions claimed in each patent. As noted by PriorSmart, Beacon is the first plaintiff to file a high volume of individual cases since the new joinder restrictions were enacted. [Complaint]

Mark T. Banner Scholarship

• The Richard Linn American Inn of Court is proud to offer the Mark T. Banner Scholarship for law students. This scholarship is part of The Richard Linn American Inn of Court's commitment to fostering the development of intellectual property lawyers of high ethics, civility and professionalism, and especially those from diverse backgrounds. [Link]

Patent Jobs:

• Harman International is seeking a patent attorney with at least 8 years of experience. [Link]
• Klarquist Sparkman is searching for lateral patent associates or patent agents with at least 1-4 years of experience. [Link]
• Klarquist Sparkman is searching for a patent attorney or patent agent with 3+ years of experience. [Link]
• Lee & Hayes is looking for patent attorneys with at least 3 years of experience. [Link]
• Withrow & Terranova is seeking patent attorneys or patent agents with at least one year of experience. [Link]
• Trading Technologies is searching for a patent agent with 3-5 years of experience. [Link]
• Trading Technologies is seeking a patent attorney with 3-5 years of experience. [Link]
• Volpe and Koenig is looking for a Japanese patent paralegal with prior experience as a patent paralegal. [Link]

Upcoming Events:

• The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
• American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25^th-October 26^th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
• Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
• The University of Texas at Austin will hold its 16^th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
• IPMI is holding the IP Law & Management Institute on November 6^th – 8^th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
• World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
• IBC will hold a Standards and Patents Conference in London on November 16^th & 17^th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
• IBC will hold a US Patent Reform Congress Conference on November 18^th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
• The American Conference Institute's 2^nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7^th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Is it really a First-to-File Patent System?

• With the passage of the America Invents Act (AIA), the US was going to become a First-to-File, instead of a First-to-Invent patent jurisdiction. However, was this really accomplished with the AIA, or was something else achieved? When most people think of a First-to-File patent system, they would probably think it means exactly what it says (the first person to file the patent application has priority). However, the 1-year grace period exceptions in 35 U.S.C. 102(b) seems to create a quasi or pseudo First-to-File system.

  102(b) (1) reads:

  • DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION. – A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if –

1. The disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor

The language of 102(b)(1) could cause lots of controversy. Essentially if an inventor puts his invention or disclosure on the internet or discloses it any public way, he/she has one year from that date to file a patent application, and the disclosure would not count as prior art against the inventor. However, the disclosure would count as prior art for a later inventor, which seems to suggest a First-to-Invent system. This creates an incentive for inventors to disclose inventions immediately so as to bar other inventors and receive an early priority date. I expect litigation about this topic and the many situations that could arise.

Judge T. John Ward, Sr. Steps Down

• Judge Ward, who is credited with turning Marshall, Texas into an unlikely hotspot for patent litigation, will return to the practice of law at Ward & Smith. Judge Ward will practice law alongside his son T. John ("Johnny") Ward, Jr. During Ward's tenure, the Eastern District also developed a reputation as being a haven for patent holders, particularly nonpracticing entities, or "patent trolls." Could the departure of Judge Ward potentially lead to a decrease in the amount of cases filed in the Eastern District of Texas? [Link]

WIPO's Statistical Country Profiles Tool

• Statistical country profiles provide information on patents, utility models, trademarks and industrial designs. They cover different dimensions of IP activity, including incoming and outgoing filings, the share of filings in different technological fields, total patents in force, and the use of international IP systems by applicants. The filings and grants are divided into the following categories: "resident" - domestic filings; "non-resident" - filings coming in from other countries; "abroad" - filings going out to other countries. The statistics also associate IP activity relative to countries' economic performance. For example, users can compare the trend of a country's total IP filings - defined as the sum of resident and abroad filings - with that of the country's GDP. Furthermore, they indicate the country's global rank for each indicator. [Link]

Upcoming Events:

• Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
• The 17^th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
• The 4^th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14^th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [Link]
• American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25^th-October 26^th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
• Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
• The University of Texas at Austin will hold its 16^th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
• IPMI is holding the IP Law & Management Institute on November 6^th – 8^th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
• IBC will hold a Standards and Patents Conference in London on November 16^th & 17^th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
• IBC will hold a US Patent Reform Congress Conference on November 18^th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Patent Jobs

• Kessler Topaz Meltzer & Check is seeking an IP litigation associate with 4-6 years of experience. [Link]
• Amin Talati is searching for a patent attorney with 10+ years of experience to work at their Chicago office. [Link]
• Roberts Mlotkowski Safran & Cole is looking for an IP attorney with 2-4 years of experience and a background in electrical engineering. [Link]
• Roberts Mlotkowski Safran & Cole is looking for an IP attorney with 2-4 years of experience and a chemical background. [Link]
• Hope Baldauff Hartman is searching for patent agents and patent attorneys with a minimum 4 years of experience to work in their Atlanta office. [Link]
• Howard & Howard Attorneys is looking for an IP associates with 4-8 years of experience and a EE or chemical background. [Link]
• Axiom is seeking patent agents and patent attorneys to work remotely. [Link]
• Fairchild Semiconductor is searching an IP attorney with at least 3 years of experience and an EE background. [Link]
• Abel Law Group is seeking a patent attorney with 4+ years of experience and a chemical and/or ceramic background. [Link]
• Choate, Hall & Stewart is looking for biologists, chemists and materials scientists to join their IP practice. [Link]
• Holland & Hart is searching for an administrative IP specialist/Secretary. [Link]
• Maginot, Moore & Beck is seeking patent attorneys with 1-5 years of experience and an EE background. [Link]
• Akerman Senterfitt is searching for a Chemical IP associate with 1-3 years of experience. [Link]
• Rutan & Tucker is looking for an experienced patent prosecution paralegal. [Link]
• The Sughrue Firm is seeking patent attorneys with at least 2-3 years of experience to work in their D.C. office. [Link]
• The Sughrue Firm is seeking patent attorneys with at least 2-3 years of experience to work in their Silicon Valley office. [Link]
• The Ware Firm is searching for recent Federal Circuit Clerk with a technical background. [Link]
• The Ware Firm is seeking a patent agent/technologist with a technical background. [Link]
• DTS is looking for a patent searcher with 3+ years of searching and/or patent experience. [Link]

Patently-O Bits & Bytes by Lawrence Higgins

Opening of Franklin Pierce Center for IP

• UNH Law is proud to announce the official opening on September 30 & October 1 of the Franklin Pierce Center for Intellectual Property with an intellectual property works-in-progress conference featuring presentations by scholars from law schools in the Northeast and alumni of UNH Law. Chief Judge Randall Rader will serve as special guest speaker. Other guest include: Jonathan Dudas, Judge Newman, and Judge Gajarsa. [Link]

Biotech in Ottawa is Booming?

• Ottawa Life Science Cluster currently home to over 90 companies focused on life science and biotechnology research and innovation. Also, there are over 50 other companies that have a secondary focus in life sciences and biotechnology. Leading the charge for commercialization is the Ottawa Centre for Research and Innovation (OCRI). With the increased commercialization in Ottawa, comes an increase in patent applications in Canada, the US, and beyond. [Link] [Link]

Great Patents!

• Great Patents: Advanced Strategies For Innovative Growth Companies, is a book that aims to inform executives on how best to use patents to improve their competitiveness. The book has a total of 12 chapters and each chapter is written by an individual in the patent world. The chapters in the book are broken into two categories: Strategies and Valuation. Companies pursue patents to make money, and this book is very useful to help companies discover what they can do with their patents that they may not have previously considered. While the book is aimed at executives and the like, it is also a useful tool for law students and others. Most law students are not familiar with the business world of patents and this book gives a perspective different than what is taught in law schools.
  • About the Author: David Orange is a patent attorney in Washington, DC. He is active in the start-up space as an investor and advisor.

Patent Jobs

• Goldberg Cohen is seeking an IP associate with 2-5 years of experience. [Link]
• Womble Carlyle Sandridge & Rice is looking for mechanical patent attorneys with at least 3 years of experience. [Link]
• Verenium is searching for a patent agent with a minimum of 5 years of experience. [Link]
• Cleveland Golf/ Srixon is seeking a Sr. patent engineer with a BSME and at least 4 years of experience. [Link]
• The Michaud-Kinney Group is looking for a legal assistant to work at their Middletown, Connecticut location. [Link]
• Qualcomm is searching for a US patent attorney or a registered India Patent Attorney/Agent with at least 5 years of experience. [Link]
• Qualcomm is looking for a patent counsel with 3+ years of patent prosecution experience. [Link]
• Steptoe & Johnson is seeking associates with a minimum of 4 years of experience in patent litigation and with a technical background. [Link]
• The Office of the Solicitor at the USPTO is searching for an experienced Patent Attorney. [Link]
• Dynamics Inc. is seeking a patent attorney with an EE degree, to work at their Pittsburgh location. [Link]

Upcoming Events:

• Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
• American Conference Institute's 12^th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4^th-5^th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
• C5 will be holding the 21^st annual Forum on Biotech Patenting in London on October 5^th-6^th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
• Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
• The 17^th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
• The 4^th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14^th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [Link]
• American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25^th-October 26^th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
• Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
• The University of Texas at Austin will hold its 16^th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
• IPMI is holding the IP Law & Management Institute on November 6^th – 8^th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Constitutional Challenge to False Marking Statute

•  Oral arguments in the case of United States, ex rel. FLFMC, LLC v. Wham-O, Inc., will take place on July 7^th. The Federal Circuit will be resolving the constitutional challenge to the false marking statute (35 U.S.C. § 292(b)). The merits panel agreed to allow the government and the U.S. Chamber of Commerce to participate in oral arguments. The court expanded the oral argument time to 20 minutes per side. This case could set the precedent to eliminate false marking lawsuits. Regardless of how the Federal Circuit rules in this case, it is likely to be appealed to the Supreme Court. [FMLC-Reply-Brief] [Order-Re-Wham-O-Oral-Arg] [Cato-Brief] [Brief-of-Amicus-Curiae-Chamber-of-Commerce] [USA-Brief-in-Wham-O] [Wham-O-Brief]

Article One launches 3 Patent Studies Focused on 4 Patents on by Lodsys

•  In response to the lawsuit Lodsys filed against several Apple iPhone developers, [Link] Article One is offering a $5,000 reward per study for the best prior art reference that provides a path to invalidity. The patents at issue are 7,133,834, 5,999,908, [Link] 7,222,078, [Link] and 7,620,565. [Link]To date Lodsys has sued 27 companies for patent infringement, so there is no way of knowing exactly who is funding the study that Article One is overseeing. [Link]

Google Granted Patent for “Detecting and Rejecting Annoying Documents”

•  On June 28^th Google was granted patent # 7,971,137, for a system and method for evaluating documents for approval or rejection and/or rating. The method comprises comparing the document to one or more criteria determining whether the document contains an element that is substantially identical to one or more of a visual element, an audio element or a textual element that is determined to be displeasing.  

What Impact Will Patent Reform Have on the Patent Office?

•  The Patent Reform legislation will allow the PTO to keep fees they receive from applicants in an account that Congress can’t touch. The PTO will likely start hiring more patent examiners in order to try to decrease the backlog of patent applications, which currently stands at around 685,000. The satellite office in Detroit more likely than not will open sometime in the near future, possibly followed by more satellite offices. Track one of the Three-Track program, which allows applicants to pay extra money to receive a first office action within a certain amount of time will go into effect. Patent Examiners will likely receive more training and be able to resume working overtime.

Patent Jobs:

• Salix Pharmaceuticals is searching for an IP and Licensing Attorney with at least 3 years of experience in pharmaceutical patent prosecution. [Link]
• BASF is seeking a Patent Counsel with 8 or more years of experience in IP transaction work and at least 5 years of experience in patent prosecution. [Link]
• Sutherland LLP is looking for an Associate of Patent Agent with 1-4 years of experience in patent prosecution and a background in Electrical Engineering. [Link]

• Baker Botts is searching for a Patent Agent with 1-3 years of experience. [Link]

Upcoming Events:

• The National Association of Patent Practitioners (NAPP) will hold their 2011 Annual Meeting and Nuts & Bolts Short Course at the Venetian Palazzo Hotel in Las Vegas, Nevada on July 16-19, 2011. [Link]
• The American Conference Institute (ACI) will hold a Hatch-Waxman Boot Camp July 18-19 in San Diego. ACI’s Hatch-Waxman Boot Camp has been designed to give counsel and advisors to brand name and generic drug critical insights into commercialization and the pre-approval process, and also provide an in-depth review of Hatch-Waxman and other IP basics relative to small molecules and biologics. [Link]
• World Research Group is holding the 8^th Annual Patents for Financial Services Summit on July 27-28^thin New York. Guest speakers include David Cunningham, Larry Bromberg, Matthew Krigbaum, and Moshe Malina. (Patently-O readers can use Promo Code ENN794 for a $200 discount) [Link]
• The 2^nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22^nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]

 

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

 

 

 

Patently-O bits and bytes in its

USPTO's Deputy Director Sharon Barner has announced her resignation. Deputy Director Barner has been Director Kappos's second-in-command since October of 2009. Prior to joining the USPTO, Barner was a senior partner at the Foley law firm in Chicago. She has not announced publicly whether she will return to private practice. Barner is leaving government service with a number of important accomplishments in-hand and without any major scandal on her tail. She remains a likely candidate for a potential nomination to the Court of Appeals for the Federal Circuit if another opening arises during President Obama's time in office. Congratulations Deputy Director Barner!

Under the law, the USPTO Director David Kappos has the power to nominate a new Deputy, but the actual appointment is done by the Secretary of Commerce (Locke). 35 U.S.C. 3 requires that "The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law." Within current PTO inner circle, Chief Communication Officer Peter Pappas has been suggested for the position as has Patent Commissioner Bob Stoll. Traditionally, the Patent Commissioner serves as interim deputy director until the office is filled. However, Director Kappos has full control over the interim organization. Peggy Focarino is currently the Deputy Commissioner of Patents.

Patenting Methods of Treatment. After deciding Bilski, the Supreme Court asked Fed. Cir. to take a fresh look at the case of Prometheus v. Mayo. In Prometheus, the patent in question is directed toward an iterative method of determining the correct dosing of a drug by injecting a quantity of the drug and then measuring the level of the drug found in the body. The Mayo Clinic and its supporters argue that the patent should be held invalid under 35 U.S.C. 101 as lacking patentable subject matter. The Federal Circuit has now released its new opinion on the case, holding once again that the claims are patentable. More to come.

Silence Implies Consent. A reader sent me a copy of the recent BPAI rehearing decision ex parte Njo involving a Pitney Bowes patent application. In the original appeal, the patent applicant had not filed a reply brief to directly contest the examiners arguments. The BPAI made clear that failure to respond should be seen as acquiescence. "This absence does, in our view, also suggest that such inaction may constitute acquiescence in the Examiner's arguments. "Silence implies assent." Harper and Row Publishers Inc. v. Nation Enters., 471 U.S. 539, 572 (1985)." Consequently, the Board refused to allow the applicant to present new counter arguments that could have been raised in the reply brief.

Hands free typing. This week I had a successful shoulder surgery. The folks at Nuance were nice enough to give me a free copy of their voice transcription software known as Dragon NaturallySpeaking 11 (legal). I am now writing the blog hands free!

Patently-O Bits and Bytes: Getting Personal

• Injured Reserve: I've been on injured reserve for the past few weeks with both arms substantially immobilized, but I am now back (at least until my shoulder surgery next week). I am now going through a load of unread e-mails. If you sent me an e-mail or left a phone message during this time, I will respond as soon as possible. – Dennis Crouch
• Popularity Challenged: It seems that my friends Gene & Renee Quinn have even more friends: Patently-O needs your vote in the ABA popularity contest.
• A bite out of Apple: At least one analyst is suggesting that the Motorola v. Apple patent litigation could "knock 15% off" of Apple's stock price. Florian Mueller has a nice diagram of the Apple lawsuits with Motorola and HTC that are ongoing in the International Trade Commission (ITC), District of Delaware, Southern District of Florida, and the Western District of Wisconsin. Mueller writes about patent challenges to Free & Open Source Software at his FOSS Patent Blog.
• Pioneering Patents: There has been a long debate in the patent world on whether patents should focus more on pioneering patents rather than on smaller "tweaks." Professors Raustiala and Sprigman discuss the issues on the Freakonomics blog.
• Peer-to-Patent on Chemistry and Biotechnology: The Peer-to-Patent system has expanded to include the review of patent applications in areas of chemistry and biotechnology. A recent application up for review was filed by Bayer and claims a Pyrrolotriazine derivative that is apparently useful in treating cancer by inhibiting aurora kinase.  [Try your hand at evaluating patentability of the claimed invention].

ABA Journal Includes Patently-O in its Blawg 100

For the fourth year in a row, the ABA Journal has selected Patently-O as one of the top 100 legal blogs (Blawgs). The list offers a nice way to find out about other high quality blogs you may have missed. For the first time, the list includes a sub-category of IP-focused legal blogs. Others in the category include the TTABlog (John Welch), TechDirt (Mike Masnick), IPWatchdog (Gene Quinn), IPKat (Jeremy Phillips and team), and Copyrights & Campaigns (Ben Sheffner). Of course, there is a quite long list of very good IP-focused legal blogs that should have made the list.

The annual listing includes a popularity contest and I would appreciate your vote. (A quick registration is required to vote.)

Notes:

• Vote here. (Thanks!)

 

Patently-O Bits and Bytes

• Nineteen new jobs have been posted to the Patently-O Job board in the past two weeks, including positions at MedImmune; Medtronic; Apple; the USPTO; Ventana Medical Systems; L’Oréal; Frost Brown Todd; Wenderoth, Lind & Ponack; Morgan Lewis; Michaud-Kinney; Marjama Muldoon; Roberts Mlotkowski Safran & Cole; Infinity Pharmaceuticals; HP; Gen-Probe; and a Telecom Software Startup in Silicon Valley.
• This weekend, I watched the Facebook movie “The Social Network.”  IP Law 360 is reporting that Quinn Emanuel should receive its $13 million in fees based on the $65 million settlement that Facebook reached with Tyler and Cameron Winklevoss and Divya Narendra.  The trio is challenging some elements of the settlement and had argued that Quinn's fees should be delayed until their dispute with facebook is fully resolved.
• In other Facebook news, the company has sued several companies for infringing its patents. The lawsuit is a retaliatory action against companies that previously sued Facebook for infringement.

IP Hall of Fame 2011

The IP Hall of Fame was the brainchild of the publisher Intellectual Asset Management (IAM). Over the past five years, forty-two individuals have been inducted into the hall of fame. [Link]  

Inductees are first nominated by the public at large.  A maximum of five inductees for 2011 will then be selected by the IP Hall of Fame Academy.  The Academy itself is made-up of all living inductees as well as a handful of others, including myself, Todd Dickinson (AIPLA), and Ciarán McGinley (EPO).

Nominations can be submitted online. [Link]. New inductees will be announced in February 2011.

Patently-O Bits and Bytes

• Professor Lichtman has introduced a new IPColloquium podcast: A chat between the UCLA law professor and Chief Judge Rader. The podcast is setup to provide free CLE for many states. [Link]
• 10% discount for Patently-O readers at the IBC Legal Conference in London on “Standards & Patents.”  Nov. 16–17, 2010. Discount Code: KW8099PTBG. [Link]
• Upcoming Hearings:
  • Nov 8: Supreme Court will hear oral arguments in Costco v. Omega. The case involves the concept of copyright exhaustion in the international context.  The decision will likely directly impact the parallel patent law doctrine.
  • Nov 9: The Federal Circuit will hear en banc oral arguments on two cases: (1) Therasense v. BD (rethinking the law of inequitale conduct); and (2) TiVo v. EchoStar (post-judgment treatment of modified product-lines).
• Satellite Offices are currently under consideration at the USPTO.  In some recent statements, Commerce Secretary Locke suggested that Detroit may a chosen spot. [Link] I contacted PTO officials who indicated that no final decisions had been made, but that some announcement may be forthcoming this calendar year.  I expect that some cities are seriously lobbying at this point.

Patently-O Bits and Bytes

• USA Today on Chief Judge Michel and Patent Reform
• Gene Quinn on Chief Judge Michel and Patent Reform
• Which patents make the best coloring-books?
• Find prior art for this Microsoft patent claim filed March 2009:
  • In a computing environment, a method comprising:
    • maintaining context information regarding prior search actions;
    • receiving a current action; and
    • accessing data obtained from a query log to determine whether at least some of the context information is relevant to the current action.
• Bill Vobach caught an interesting tidbit from the recent Federal Circuit oral arguments in ESN v. Cisco. As in many cases, the briefs included significant references to “confidential materials.”  Judge Prost raised the issue of how the parties expected the court to write an opinion in this situation.  Judge Dyk indicated that the situation is an “absolute plague.”  Finally, Chief Judge Rader concluded that “if we need it for the opinion, we'll probably use it.”

Patently-O Bits and Bytes

• USPTO Technical Training for Examiners: The USPTO is looking for folks to provide free scientific & technical training to examiners. The program does not allow guest lecturers to discuss their own pending applications or provide advice on the patentability of any particular claims. [Participate Here]
• Top-25: IP Reporter Joe Mullin and his crew have created a list of "The 25 Most Influential People in IP." The list includes Professors Lemley & Duffy; PTO Director Kappos; Judges Rader, Michel, & Ward; Justice Kennedy, Senator Leahy; Bob Armitage (Lilly); John Amster (RPX, son of Mort Amster); and Chip Lutton (Apple).
• London Conference: International Patent Litigation 2010 -- IBC Legal is holding a conference on International Patent Litigation 2010 in London on December 6th-7th. Use code KW8093PO to get a 10% discount. http://www.informaglobalevents.com/patlitpo.
• Reexaminations: In 1998, an anonymous requester filed a request for ex parte reexamination of U.S. Patent No. 5,583,216 owned by Takeda Pharmaceuticals. Earlier this week (and after 12-years in-process) the USPTO issued a reexamination certificate confirming that the original claims are patentable. Hal Wegner handled the reexamination for Takeda, including multiple appeals to Federal Court. The average reexamination certificate in FY10 was issued about 2.5 years after the reexamination request was filed.

Stanford and Samsung offer $130,000 in Prize Money for Articles on Patent Remedies

Last week, President Obama's administration released its new CHALLENGE.GOV website. Today stanford law school announced the Samsung-Stanford Patent Prize -- this year focusing on patent remedies. All Patently-O readers are eligible:

Call for Papers: Samsung-Stanford Patent Prize

Topic: Patent Remedies

Samsung Electronics and Stanford Law School are proud to co-sponsor the inaugural Samsung-Stanford Patent Prizes. We are seeking outstanding papers and paper proposals on the topic of patent remedies. We will award up to seven Prizes in the amount of $10,000 each to academics, lawyers, and other professionals in any field who submit the best papers or abstracts. In addition, we will award up to 12 Prizes in the amount of $5,000 each to full-time students in any field who submit the best papers or abstracts. The winners are expected to attend and participate in a conference on the subject of patent damages to be held at Stanford Law School on February 18, 2011. Travel expenses will not be separately reimbursed, but should be paid out of the prize money.

Applicants should submit a precis of their draft or proposed paper (not to exceed five pages) by email to Brian Love at Stanford Law School (blove@law.stanford.edu) no later than October 31, 2010. Winners will be notified by approximately November 15, 2010. To be eligible for the Prize, winners must submit a draft of their paper in advance of the conference, by February 1, 2011.

The purpose of this prize is to encourage new research; eligible papers must not have been published before December 31, 2010.

CHALLENGE.GOV: Prizes as an Additional Incentive Layer

In my patent law course last week, we had discussion of the role of a patent system as compared with other potential governmental pro-innovation initiatives such as grants or prizes.  Our current patent system does not provide any strong mechanisms for channeling innovation toward particular identified issues.  Rather, investors and inventors choose their own paths according to their own subjective perception of the potential market upside.  When an important challenge is publicly identified, we may want to add an additional layer of incentive to funnel research in a particular direction. In that vein, the Obama Administration's Chief Technology Office Aneesh Chopra and Chief Information Officer Vivek Kundra unveiled CHALLENGE.GOV at yesterday's GOV 2.0 conference.  CHALLENGE.GOV identifies 35 challenges and offers prizes for folks who provide novel solutions.

Identified challenges include:

• Create nutritious food that kids like — $12,000 prize.
• Reducing waste at college football games — school prestige award.
• Best original research paper as judged by the Defense Technical Information Center.
• Provide a whitepaper on how to improve reverse osmosis membranes — up to $100,000.
• Digital Forensics Challenge
• Federal Virtual Worlds Challenge (Create the best virtual world for the US Army) — $25,000 in prizes.
• Advance the field of wireless power transmission — $1.1M for a team that can wirelessly drive a mechanical climber to 1 kilometer height at a speed of at least 5 meters/sec. 
• Strong Tether Challenge — create a material with 50% more tensile strength than anything on the market for $2 million.
• etc.

USPTO's Data Visualization Center and Patent Dashboard

The USPTO has publicly released its data visualization center and patent dashboard. The site does an excellent job of providing a visual overview of the current USPTO state-of-affairs in terms of patent backlog, pendency, and allowance rate. The site also breaks-down those numbers in various ways that may be useful for advising your clients.  Data-downloads on the site provide unprecedented public access to PTO numbers that were previously either uncalculated or largely kept secret.

PTO Director Dave Kappos additionally sees the dashboard as providing patent office accountability and publicly facing the challenge of reducing patent pendency. Kappos writes on his blog:

An important part of the effort to reduce pendency is better understanding the numerous factors that contribute to examination delays and measuring their impact in a way that makes the USPTO more transparent to the public.  By looking at the whole picture, we can more effectively develop ways to increase the efficiency of the examination process.  While we know we have to hire more examiners to reduce the backlog, we also know that we must re-engineer the way we do business at the USPTO and have already implemented a series of initiatives designed to improve efficiencies.  These process changes will empower our workforce to be more effective and have already begun to yield important gains.

. . . [The Dashboard] will help the entire IP community to better understand our processes, and enable applicants to make more informed decisions about their applications, especially as we develop more opportunities for applicants to control the timing at which their applications are examined.  The new dashboard, which will be updated monthly, will also be used internally by the USPTO to analyze and improve our examination process and to track the effectiveness of our improvement efforts.  We intend to further refine the dashboard and welcome your input about ways we can improve it.  A dedicated mailbox [feedback@uspto.gov] has been set up for your comments and we intend to monitor your feedback carefully. 
 
The dashboard introduces six new measures of pendency designed to give a better overall picture of the contributions of different parts of the examination process to application pendency.  For example, the traditional total pendency measure stops the clock with the filing of an RCE, which may not provide an accurate measure of the total time it takes to complete the examination of an application through request for continued examination (RCE) practice.  A new measure, called "Traditional Total Pendency Including RCEs," looks at pendency of applications from filing of the original application to ultimate disposal of that same application, including any additional time attributable to RCE filings in those applications where RCE filings are made.  Similar measures are provided relative to divisional applications and other types of continuation practice.  We also provide information about pendency for applications in appeal practice.

Links:

• Data visualization center and patent dashboard
• Kappos Blog
• [It appears that the site has a few kinks to work-out as the data downloads are not working properly]

Patently-O Bits and Bytes

Upcoming Events:

• Professor Mark Janis of Indiana has put together a really interesting conference titled “Patent Scope Revisited: Merges & Nelson's ‘On the Complex Economics of Patent Scope,’ 20 Years After.”  Sept 23–24 in Bloomington. Speakers include Rob Merges, Don Chisum, Ed Kitch, John Duffy, Jay Kesan, Rochelle Dreyfuss, Kevin Collins, Chris Cotropia, etc. (I will also be speaking at the event and hope to see you there.) [LINK]. (FREE)
• Catholic University (Columbus School of Law) is presenting a discussion of the “Ethical Ramifications of Therasense” on Sept 27 from 5pm – 6:30pm at the National Press Club.  Speakers include Professors Beth Winston and Megan La Belle from Catholic University along with ITC Chief Judge Paul Lukern, Professor Lisa Dolak (Syracuse), Jim Kulbaski (Oblon) and Ed Polk (Foley) [LINK]. (FREE).
• Former Chief Judge Michel along with a host of professors and in-house counsel will discuss “Patentable Subject Matter” on Sept 20 9:30am – 12:45pm at GWU in DC. [LINK].
• San Diego IP Law Association is holding a Discussion of Therasense on Sept 23 from 6pm – 10pm. Speakers include Chris Mammen, Hans Sauer (BIO), Larry Repress, and Fred Hadidi. [Link] ($70–$90).
• 2010 APLF Annual Meeting is September 29 – October 1 in Chicago. [LINK].
• IBC Legal has an interesting looking conference in London discussing IP Rights in China on the November 22–23. Patently-O readers should use code KW8070PO for a 10% discount. [Link] 
• WAY OUT IN THE FUTURE: On Feb 25, 2011, The Missouri Law Review is hosting a conference that looks at the patent jurisprudence of the Court of Appeals for the Federal Circuit with a special focus on the impact of Chief Judge Michel. It will held right here in Columbia Missouri.

Patent Jobs:

• Marjama Muldoon Blasiak & Sullivan LLP, a Central New York intellectual property law firm, has immediate openings for a Patent Attorney. [Link]
• Lee & Hayes, a nationally known intellectual property (IP) law firm, is seeking a lateral experienced patent attorney. [Link]
• International IP Law Group is seeking an Associate, Of Counsel to prepare and prosecute patent applications relating to complex electrical technology and software. [Link]
• ResMed (Sydney) is seeking a Qualified US, European or Australian patent attorney with a number of years post registration experience. Experience within biomedical engineering and in-house will be looked upon favourably. [Link]
• HP seeks a patent attorney. [Link]

New Hampshire Law School:

Franklin Pierce Law Center was founded by patent attorneys back in 1973.  For a time the law school was the clear national leader in the training of future patent attorneys. In the past 15–years, many law schools have added patent-focused faculty, but Franklin Pierce is still one of only a handful of schools that focuses on IP law training rather than legal theory. This week, the law school announced that it has formally merged with the University of New Hampshire and has become the University of New Hampshire School of Law. At the same time, the school created Franklin Pierce Center for Intellectual Property. Congratulations to my friends at UNH! [Link]

Fundraiser -- Race for the Cure

I recently agreed to help raise funds to support efforts to fight breast cancer.  The funds that we are raising go toward educational, treatment, and screening programs.  As part of the effort, I will be running in the 2010 “Race for the Cure” — a 5K race here in Columbia Missouri on September 19. Please use the link listed below to join me as a sponsor of the run.

• Donate: LINK
• Check my Goal: LINK

Thank you!

Dennis Crouch
dcrouch@patentlyo.com

Patently-O Bits and Bytes

If you are a law professor teaching a general course on intellectual property, you might consider a cheap text-book alternative:

• Franklin Pierce Professor Tom Field freely gives-away PDF versions of his 470 page book titled Fundamentals of Intellectual Property.
• Lewis & Clark Professors Joe Miller and Lydia Loren have started their own publishing company and offer their book titled Intellectual Property Cases and Materials for a suggested fee of $30.
• Students who want a bound-book can take the document to Kinkos with a $20 bill.
• [This semester, I am teaching Patent Law and have assigned the casebook by Merges & Duffy. Although not cheap, that book has the lowest cost per pound of any on the market.]

Recent Patent Law Jobs:

• Patent Counsel (0–5 years patent experience) for HP
• Patent Agent (3–5 years patent experience) at Infinity Pharma (small molecule drug cancer treatments)

Some Recent Patent Lawsuits:

• Allure Home Creation Co. Inc. v. Maytex Mills Inc. (D.Del.) — Patent covers a shower-curtain hook.
• Simonian v. Mitchell-Vance Labs (E.D.Ill.) — False marking action against maker of “ScarAway” whose product packaging lists an expired patent.
• AGA Medical Corp. v. W.L. Gore & Associates (D.Minn) – Patent covers a device that can be inserted via a catheter for blocking leakage of an internal body organ.
• De Beers UK Limited v. Kohls & Adwar Casting (W.D.Mo.) – Design patents cover jewelry.

Patently-O Bits and Bytes

• Rational Ignorance at the PTO: I received many interesting comments on The Lemley-Cotropia-Sampat article yesterday.  Many of the comments pushed-back against the authors’ conclusions with reasons why applicant-cited art is more-rarely asserted in prior art rejections. Query: Do you have suggestions for going about proving/disproving their conclusion that USPTO patent examiners “effectively ignore” applicant-submitted prior art.
• Patent Law in Print:
  • Joe Mullin at Corporate Counsel (an ALM Magazine) reports on Patent Attorney Wes Whitmeyer’s patent infringement lawsuits against Brinks Hofer, Dinsmore & Shohl; Benesch Friedlander; Edwards Angell; and WilmerHale. [Link]
  • Susan Pan and Natalya Dvorson have a useful article in IPToday on how to obtain refunds from the USPTO. [Link]
  • Abigail Rubenstein of Law360 has a brief article about the en banc request in Telcordia Tech v. Cisco. In that case, Cisco is asking the Federal Circuit hold that Judges (rather than Juries) should decide whether patent claims are invalid as indefinite.  Microsoft and GM filed a joint brief in support of the petition. [Link]
  • Sharon Oriel has published a short article in Intellectual Asset Managament (IAM) magazine describing “a three-step process to persuade a company that it can prosper and grow through investing in intellectual asset management.” [Link]
• Recent Patent Law Jobs:
  • Amazon is looking for business-minded corporate counsel with at least 5–years of patent prosecution experience and combination of in-house and law firm experience. [Link]
  • Miller Nash law firm is looking for a patent attorney (or attorneys) with 4+ years experience and a focus on medical devices and life-science related software. [Link]

Patently-O Bits and Bytes

e-Office Action:

• Thirty Percent (30%) of all USPTO patent correspondence is now communicated electronically. Up to three e-mail addresses can be identified for each pending application. Rather than sending paper, applicants receive an e-mail notification of an office communication that can then be accessed via Private PAIR.
• The e-Office Action system can help streamline docketing. In addition, attorneys receive the communication a few days earlier and in a form that can be easily communicated to their clients.
• More Info

Blogs to Check-Out:

• Patent Math by Dave Healey of Fish & Richardson
• All Things Pros by Karen Hazzah of Thomas Kayden
• Patent Think by David Feigenbaum of Fish & Richardson

Recent Patently-O Job Posting:

• In Seattle, the Miller Nash firm is seeking a medical devices patent attorney with at least four years of IP practice experience. [Link]
• The DC Area firm McGinn IP (located in Tysons Corner, Virginia) seeks an experienced patent attorney with an electrical engineering background. [Link]
• The Denver based firm Holland & Hart is seeking a licensing and technology transactional attorneys. Potential to join any of the H&H offices (Denver, Boulder, Salt Lake, Boise). [10+ years Experience][5+ years Experience]
• Holland & Hart is also seeking an associate for their trademark enforcement practice. Must have outstanding academic record, superior writing and communication skills. [Link]
• Pfizer is seeking an Assistant General Counsel for Patents to support its Vaccines Research Unit and Center for Integrative Biology and Biotheraputics. [Ph.D. J.D. and 10+ years Experience]
• The bio/pharma company Gilead Sciences seeks a patent attorney to work with it respiratory therapeutics area in Seattle, Washington. 8+ years IP experience including in-house experience. [Link]
• Kroger is looking to hire a patent counsel to help develop a corporate patent strategy, oversee Kroger’s patent portfolio and manage liability. [Link]

Patently-O Bits and Bytes

• Funding: The Senate has also passed the PTO funding bill (H.R. 5874) that restores $129 million of fee-collected income to the PTO. The bill specifically provides “For an additional amount for `Salaries and Expenses’ of the United States Patent and Trademark Office, $129,000,000, to remain available until expended: Provided, That the sum herein appropriated from the general fund shall be reduced as offsetting collections assessed and collected pursuant to 15 U.S.C. 1113 and 35 U.S.C. 41 and 376 are received during fiscal year 2010, so as to result in a fiscal year 2010 appropriation from the general fund estimated at $0: Provided further, That during fiscal year 2010, should the total amount of offsetting fee collections be less than $2,016,000,000, this amount shall be reduced accordingly.”  The President will sign the bill shortly.
• The PTO is expected to use the money to hire and train additional examiners and upgrade its information technology system.
• Gene Quinn — the IPWatchDog — is posting a series of interesting interviews:
  • Behind the Scenes: A Day in the Life of David Kappos
  • An Interview with Former Chief Judge Paul Michel: Part I; Part II; Part III
  • Interview with Chief Judge Rader
  • Interview with Billionaire Inventor Gary Michelson
  • Interview with Professor Doug Lichtman
  • Nice work Gene!

Patently-O Bits and Bytes

• Congratulations: The Administration (and its supporters) have successfully lobbied the House of Representatives to allow the PTO to keep $129 million of its funds collected over-budget. Because the CBO had already accounted for that money as general income, the return of the money required a debit from some other expenditure. The source ended up being money that had been over-budgeted for the Census.  See H.r. 5874.  To become law, the bill would also need to pass the Senate. However, at this time, no equivalent bill has been introduced into the Senate.
• Fee shifting: In the pending case of Netflix v. Media Queue, Netflix has asked the Federal Circuit to revisit the law of 35 USC 285 in terms of when the prevailing party should be awarded attorney’s fees. Netflix argues that the current rule makes it too difficult for defendants to collect Attorney’s fees after prevailing against charges of infringement.  Those interested in the case may want to look at data collected by Professors Michael Meurer and James Bessen in preparation for their 2008 book Patent Failure. [Data available here].
• Interim Guidelines on Patentable Subject Matter: The USPTO has released a new set of interim guidelines for examination of the Section 101 eligibility of process claims.  http://www.uspto.gov/news/pr/2010/10_35.jsp.
• Revisiting RCE Statistics

Patently-O Bits and Bytes

• Todays Posts:
  • Updated Statistics: Patent Application Pendency
  • Inequitable Conduct: Leviton Manufacturing v. Universal Security Instruments by Jason Rantanen
• New Contributing Author: Jason Rantanen
  • My friend Jason Rantanen has agreed to become a contributing author on Patently-O for the next few months. He’ll be posting case reviews and other notes about once each week.  Jason and I were classmates at the University of Chicago School of Law. Before law school, Jason earned degrees in both Biology (Brown) and History (Brown, Chicago).  He clerked for Judge Bryson on the Federal Circuit and litigated IP disputes at the Munger Tolles firm in San Francisco.  This summer, Jason started on an academic path as a Visiting Scholar at UC Hastings School of Law. He may not want this shared, but Jason is also married to a patent attorney.
  • Posts written by Jason will bear his name.
• Media Queue v. Netflix:
  • I recently posted on the push by Netflix for a legal shift that would allow successful defendants greater access to recover attorney fees. [Link] Nick Gross, the inventor and patent attorney at the heart of the lawsuit has now posted an article on his blog where he addreses “certain false statements and mischaracterizations raised by Netflix.” [Link] Nick Gross’s post provides an interesting history — especially regarding pre-litigation activities between the companies.

Patently-O Bits and Bytes: USPTO PPAC Morning Report

Financial:

• USPTO budget for FY2010 limited by Congress to $1.887 billion dollars. Projected collections for FY2010 is expected to be $200 million over that limitation. Under the current law, all of that money will be sent to congress. Congress has already allocated $100 million of that overage on other non-patent items. Thus, to get that money back at this point, Congress would need to take $100 million from another source.
• Budget for FY2011 — requested budget of $2.3 billion that includes a bump for significant technology upgrades at the Office.

Backlog:

• In January 2009, PTO had about 765k unexamined utility patent applications.  That number is now down to about 735k.  The PTO is pushing a 699k campaign to drive the number of unexamined cases under 700,000 this year.
• The PTO has made 62 new “experienced” hires this FY. 

Patently-O Bits and Bytes

I worked with my former firm MBHB on a special Bilksi edition of their newsletter.

• Snippets can be downloaded here: http://www.mbhb.com/snippets/bilski
• Topics include:
  • Viewpoints on Life After Bilski v. Kappos 
  • With Bilski Having Come and Gone, It's Time to Get Back to Work 
  • Avoiding Abstract Claims by Broadly Defining the Problem 
  • A Critique of Bilski's Textual Analysis 
  • Questions Surrounding a Shift to an "Abstract Idea" Test
  • Bilski v. Kappos: Effects on Biotechnology Patents

Some New IP Blogs:

• PharmaPatentsBlog by Courtenay Brinckerhoff and her folks at the Foley law firm.
• CaseClothesed by Prof Hunter and his NYLS law students.
• Patentology by Aussie patent attorney Mark Summerfield.

Old Stand-by IP Blog:

• Peter Zura’s 271 Patent Blog
• Gene Quinn, the IP WatchDog
• Noonan, Zuhn, and the Patent Docs
• The UK’s IP Kat

Patent Law Pro Bono and the Federal Circuit Bar Association

• The Court of Appeals for the Federal Circuit handles several distinct types of cases.  The largest dollar-value cases typically involve patents.  The veteran and government personnel appeals are usually worth much less.  Many patent litigators have begun handling these lower-value appeals on a pro bono basis.  Professional representation in these cases helps insure that justice is served. In a recent ceremony, Federal Circuit Chief Judge Rader and CAVC Chief Judge Greene honored the volunteers for their service.  Four particular attorneys deserve special praise for their efforts: Ron Smith, Blair Taylor, Dion Messer, and Paul Eaglin (as well as Jim Brookshire of the FCBA).  Others who were recognized at the ceremony include: Mark Abate, Alan Anderson, Michelle Armond, Reynaldo Barcelo, Alyson Barker, Dawn Marie Bey, Elizabeth Brenner-Leifer, Carl Bretscher, William H. Burgess, John Bustamante, Kurt Calia, Mary Calkins, Steve Carlson, Virginia Carron, Yar R.Chaikovsky, Connor Civins, Bradley Coburn, David Cohen, Kristin M. Cooklin, Donald Curry, Steve Daniels, Lauren A. Degnan, Kirk Dorius, John Dragseth, Helen Dutton, Paul Eaglin, Geoffrey Eaton, Brian Edmunds, Sam Ernst, James Erwin, Cecilia Fex, Bob Fuhrer, Anthony Garza, Shane Glynn, Daniel Graham, Joshua Graham, Maximilian Grant, Frederick Hadidi, Thomas Halkowski, Jason Harp, Cathy Harris, Edmund Haughey, Nathan Henderson, Dan Herzfeld, Todd Hettenbach, Christopher Hower, Richard Hung, Christopher Ryan Johnson, Harold Johnson, Lawrence Kass, Lisa Kattan, Rudy Kim, Brian Kramer, Kevin T. Kramer, Deanna Kwong, Brad Lane, Steve Lauff, Lewis E. Leibowitz, Greg Lipper, Christopher Liro, John Livingstone, Christopher Longman, Doug Lumish, Chris Martiniak, Duane Mathiowetz, Aaron Maurer, Scott P. McBride, Scott McCaleb, Michael McCaleb, Ryan McCarthy, Richard McLaren, Dion Messer, John Molenda, Brian Pandya, Chad Pannell, Lee Perla, Matthew Phillips, Janet Phipps Burkhead, Thomas Puppa, George Quillin, Courtland Reichman, Edward Reines, Elizabeth Roesel, Elizabeth Rogers Brannen, Joshua Rothman, Adam Samansky, Jeff Schwartz, Beth Shaw, Chad Shear, William J. Simmons, Michael Sink, John Skenyon, Ronald Smith, Eric Sophir, Robert Stanley, Henry Su, Blair Taylor, Bryan Vogel, Keith Vogt, Daniel Volchok, Steven Warner, Scott C. Weidenfeller, Andrew Woodmansee, Jennifer Wu, and Hunter Yancey.
• If you are interested in pro bono service, contact Nece Jordan at jordan@fedcirbar.org. 

 

Patently-O Bits and Bytes

• Congressional Action on Patent Reform:
  • Senator Leahy has posted a note on his website (link) criticizing Bilski because it “needlessly left the door open for business method patents to issue in the future, and I am concerned that it will lead to more unnecessary litigation.”
  • Leahy is looking at Bilski as a mechanism for driving legislative reforms: “The courts, however, are constrained by the text of our outdated statutes, and it is time for Congress to act.”
  • Anti-tax-patent activists (i.e., most tax lawyers and accountants) are now thinking about pushing for a legislative exception.
• EPO Count System: At a recent meeting in Edinburgh, the EPO Vice-President for legal and international affairs mentioned that EPO patent examiners receive twice as much credit for rejecting an application than for allowing the application “because, as everyone knows, a rejection takes much more work than an allowance.” (Is this correct?)
• Patent law jobs posted in the past week:
  • Baker Botts in Palo Alto
  • In house at POET (Ethonol Producer) in Soux Falls, SD
  • In house at Medicis in Scotsdale
  • In house at Maquet Cardiovascular in Mahwah, NJ
  • In House IP Management for the Energy & Environmental Research Center (EERC)
  • In house at Medtronic in Memphis
  • In house at Roche in Pleasanton, CA
  • In house Licensing at Promega in Madison
  • Marjama Muldoon in Syracuse

Patently-O Bits and Bytes

• Thank you Sponsors:
  • The Patently-O Home Page continues with the exclusive sponsorship of the law firm of McDonnell Boehnen Hulbert & Berghoff LLP.
  • Patently-O Jobs has a new sponsor: Patent Attorney Allen Black. Black joins long-time job-board sponsor Franklin Pierce Law Center.
  • Thank you for your support! Contact Ryan Swarts if you are interested in sponsorship/advertising.
• Speaking of the Job-Board. There are several new listings:
  • Leviton Manufacturing (Long Island, New York) needs to hire a patent agent to manage both US and Foreign prosecution.
  • The International IP firm of Ladas and Parry seeks EE patent prosecutors in Los Angeles as well as IP attorneys with their own books of business.
  • Pfizer seeks an experienced patent attorney to join its small molecule therapeutics team in Groton, Connecticut.
  • In Washington, D.C., the firm of Smith, Grambrell & Russell, LLP is seeking an experienced patent attorney with a mechanical engineering background.
• Speaking of MBHB.
  • I'm proud to announce that Team USA is champion the 2010 Patent Cup Regatta held this year off the island of Marstrand in Sweden. Team USA included three MBHB partners – Leif Sigmond (captain), Marcus Thymian, and Michael Gannon – along with Derek Minihane of Cochlear. The US team beat-out competing teams from Canada, Brazil, France, Germany, UK, and the EPO. [Link]
• Patenting Methods of Paying for Patents
  • WhitServe LLC v. Benesch Friedlander Coplan & Aranoff LLP et al., 8-10-cv-01639 (D. Md. 2010). [Zura]

Patently-O Bits and Bytes No. 138: New Job Openings

• Patent Prosecutor - Law Firm - Woodbridge, N.J.
• Patent Counsel - Small Corporation - Cambridge, Mass.
• Patent Attorney (Prosecution) - Law Firm - Alexandria, Va.
• Sr. Intellectual Property Counsel - Law Firm - Boston, Mass.
• Patent Agent/Associate - Law Firm - Rockville, Md.
• Patently-O Jobs Sponsored by Franklin Pierce Law Center.

Centocor v. Abbott: In June 2009, Centocor won a $1.67 billion judgment against Abbott based on the jury's findings that Abbott's arthritis treatment Humira infringes Centocor's U.S. Patent No. 7,070,775. In a post-trial verdict, Judge Ward has rejected Abbott's defenses of inequitable conduct and laches. An appeal to the Federal Circuit will follow. [MCSmith][Patently-O Discussion of the Verdict].

Medela v. Kinetic Concepts: The Supreme Court has rejected Medela's petition for certiorari. The petition challenged the notion that a jury should decide the legal question of obviousness. [Supreme Court Docket]

Patently-O Bits and Bytes No. 137

• Pirates: The EU Parliament now has two members from the Swedish Pirate Party. The Pirates platform is based on weakening copyright laws and eliminating patents. The first line of the party website reads: "The Pirate Party wants to fundamentally reform copyright law, get rid of the patent system, and ensure that citizens' rights to privacy are respected." [LINK]
• Billion Dollar Trade Secret Trial: The top semiconductor manufacturer in Taiwan (TSMC) sued the top mainland China semiconductor manufacturer (SMIC) for stealing its trade secrets (in state court in California). The jury sided with the plaintiff, although the damage calculation is still underway. [LINK]
• JOAO Control & Monitoring v. Playboy & Penthouse: The JOAO patent holding company has sued a dozen online pornography providers alleging patent infringement. The asserted patent claims an apparatus for transmitting audio and video information from a vehicle to a website. The inventor Ray Joao is also a patent attorney and is represented by Andrew Spangler.
• Who Owns Patents being Reexamined: The folks at Westerman Hattori have been writing about reexaminations. In a recent post, they list the top-ten patentees whose patents are undergoing reexaminations (based on reexaminations granted since January 2009). The top five include Rambus, LGE, Weatherford/Lamb, Mondis Tech, and ADC Tech. [LINK]

Bits and Bytes No. 136

• The new website Found Persuasive looks to be an excellent addition to the online patent discussion. The authors promise a practical discussion of "patent prosecution strategies and templates for the patent practitioner. Patent attorneys Michael Leonard, Jared Olson, and Sheetal Patel are the authors.
• The ReexamCenter is full of practical information about Reexamination Issues. The new site is run by Robert Sterne's team at Sterne Kessler.
• Professor Ho at Loyola (Chicago) sent in information about an upcoming event: IP Day in Chicago on November 3.
• The PTO Central Reexamination Unit (CRU) has a new website design and updated statistics.
• USPTO Ombudsman: The PTO has invited public comment on its Ombudsman Pilot Program. The program is intended to create a direct-line of communication for applicants who believe that their applications are being improperly examined. e9-25798.pdf.

Bits and Bytes No. 134: Personnel - Past and Present

• Duke Law Professor Arti Rai has started work at the USPTO as the "Administrator for External Affairs." Although not a registered patent attorney, Rai had a focus on biochemistry at Harvard and attended one year of Harvard Medical School before heading to law school (again at Harvard). [cv] In addition to her extensive knowledge of the patent system, Rai is an expert on administrative law. In her writings, she typically argues that the PTO should be given more independence and power.
• Professor Rai's new position will likely focus on PTO relations with other US governmental entities as well as with foreign governmental entities.
• Professor Rai offered remarks at the Collegiate Inventors Competition in Chicago on Monday evening. Here are a few quotes:
• "As I know from my research, and from my own sister’s experience with her biotech startup, inventors need this protection in order to attract research and development capital. The challenge we face at the USPTO is ensuring that inventors can always look to us for strong and speedy protection."
• "Since taking office a little over two months ago, Director Kappos has moved aggressively to reform the office, expedite the way in which we examine patents, update our IT infrastructure, and reach out to stakeholders and members of Congress to provide a sustainable funding mechanism for the USPTO. We are committed to using all of the tools at our disposal to reduce the amount of time it takes for inventors to get the patents they need to bring products to the marketplace. You will be hearing more in the months to come, so stay tuned and keep believing in your ability to change the world with your inventions."
• IP Hall of Fame Nominations: Nominations have opened for IAM Magazine's Annual Award to "honour those who have made an outstanding contribution to the development of IP law and practice." http://www.iphalloffame.com/
• Call for Papers: Next Generation of Antitrust Scholarship Conference

Patently-O Bits and Bytes No. 129

• Law Student Scholarship: The Richard Linn American Inn of Court is sponsoring a newly established scholarship in honor of Mark T. Banner who died in 2008. Mark was a major force in the patent community and was very helpful to me early in my career. Although the Linn AIC is located in Chicago, the organization is taking applications nationally, now through October 10, 2009. The award is open to any student interested in pursuing a career in intellectual property. However, some preference may be given to students who are involved in a local Inn of Court. Intellectual property focused Inns are located in Chicago, DC, San Francisco Bay Area, Philadelphia, New Jersey, NYC, LA, and Boston. [Download The Richard Linn Inn Mark T. Banner Scholarship Materials][About American Inns of Court].
• Job Board Sponsor: I'm happy to announce that Franklin Pierce Law Center has become a sponsor of the Patently-O job board. The law school continues its focus on patent law with a particular emphasis on practical training. I was teaching there in the summer of 2007 and very much enjoyed my stay in southern New Hampshire.  

Bits and Bytes No. 127: Patentability shall not be negatived by the manner in which the invention was made.

Upcoming Conferences:

• World Research Group, a Patently-O job board sponsor, will be holding a TechNet Patents Forum in New York on November 5-6. Patently-O readers will receive a $300 discount by using the promo code EAG476.

Federal Circuit En Banc:

• On September 18, the Court of Appeals for the Federal Circuit will sit en banc to hear two non-patent cases.
• Nebraska Public Power v. US:
  • The Nebraska case is one of several dozen Federal Claims actions against the US Government for breach of contract and takings for the Government's failure to begin removing spent nuclear fuel.
  • Question: Does the mandamus order issued by the United States Court of Appeals for the District of Columbia Circuit in Northern States Power Co. v. United States Dep't of Energy, 128 F.3d 754 (D.C. Cir. 1997) preclude the United States from pleading the "unavoidable delay" defense to the breach of contract claim pending in the United States Court of Federal Claims, and if so, does the order exceed the jurisdiction of the District of Columbia Circuit?
• Henderson v. Dep't of Veteran Affairs:
  • Equitable tolling of claims for veteran's benefits
  • Question: Does the Supreme Court's decision in Bowles v. Russell, 127 S. Ct. 2360 (2007), require or suggest that this court should overrule its decisions in Bailey v. West, 160 F.3d 1360 (Fed. Cir. 1998) (en banc), and Jaquay v. Principi, 304 F.3d 1276 (Fed. Cir. 2002) (en banc), holding that 38 U.S.C. § 7266 is subject to equitable tolling?.

Relevance of the “manner in which the invention was made:”

• 35 U.S.C. 103(a) makes clear that “[p]atentability shall not be negatived by the manner in which the invention was made.” That final sentence of the paragraph was apparently intended to contrast the 1952 law from the Supreme Court’s loose statement in Cuno that a patentable invention must “reveal the flash of creative genius.” 314 U.S. 84 (1941).
• Should this statement be interpreted to mean that the inventor’s actual process has no relevance to the questions of novelty and nonobviousness? Or, is there still room for a jury to consider the actual creativity and genius of the inventor and the process used. (This question was suggested by a comment on the blog).

Patently-O Bits and Bytes No. 126

• Oral arguments for the Bilski case have been set for November 9, 2009. (via Vobach)
• Ryan Durham of Novak Druce has created a Google Maps application (mash-up) to locate registered patent attorneys and patent agents. The software is still in Beta, but is pretty cool. [link]

Bits and Bytes: Hot News

Today's Posts that may have been lost in the shuffle:

• Proof of Actual Fraud on the Patent Office
• En Banc: Methods do not have Exportable Components and Therefore Method Claims Cannot be Infringed Under Section 271(f)
• Judge versus Jury: Who Should Decide the Question of Obviousness?
• Top Patently-O Posts from the Past Year

Let's meet up:

• The MBHB law firm has been a longtime sponsor of Patently-O. (Thanks!) The firm is co-sponsoring a reception and dinner at the newly constructed wing of the Art Institute of Chicago on Monday, September 14, 2009 as part of the part of the Intellectual Property Owners Ass'n (IPO) annual meeting. I hope to see you there. [IPO]

Examining:    

• IPBiz has an interesting headline about rejection rates: Examiners: "We're the ones who put 'no' in innovation". The post is a discussion of this newspaper article.

Question on dedication of material

I’m working on compiling the data from the recent survey on antedating prior art through the use of Rule 131 affidavits during patent prosecution. I have a question for practitioners on the current state of the dedication rule.

MPEP 715 reads as follows:

An affidavit or declaration under 37 CFR 1.131 is not appropriate . . . (F) Where the reference is the disclosure of a prior U.S. patent to the same party, not copending. The question is one of dedication to the public. Note however, In re Gibbs, 437 F.2d 486, 168 USPQ 578 (CCPA 1971) which substantially did away with the doctrine of dedication.

What is the current state of the law regarding later claiming material disclosed in earlier not-copending application?

Patent Backlog

Yesterday, I posted data about patent application pendency at the US Patent Office. The following comment came from an a longtime partner at a midsized IP botique in DC:

I suppose I’m something of a lone wolf in thinking that the backlog in applications we have now is not much worse (certainly not DRAMATICALLY) worse than the backlog we’ve had all along, or at least since I’ve been in patent law. Your chart shows that 50% of application were disposed of in about 3.5 years and about 90% in roughly 6 years. When I was an examiner, back in 1990 or thereabouts, there was a lot of verbiage given to getting average pendency to 3 years – so it must have been higher than that at the time. It would be interesting, I think, to see the same analysis done for application filed one and two decades earlier then those in these charts, plotting all the data normalized to the starting date. Maybe someone has done this in a meaningful way already; but, I haven’t seen it. If the curves are the curves are substantially the same, it would put the lie to oft heard cries about a burgeoning backlog that’s crushing competitiveness and the false impression given by quoting the raw number of applications now pending.

Office Actions

Although not necessarily any indication of quality, the length of non-final office actions has been increasing over time – shifting from an average of 7.5 pages in 2003 to 10.7 pages in 2009. The chart below – shows that the increase has been relatively steady over the past six years based on a sample of 8400 non-final office actions from patent applications filed 2001–2007. (Page count includes cover page and summary).

What is the cause of this rise?

Ranking of Patent Law Blogs

Gene Quinn – author of IP Watchdog – spent a good amount of time cataloging and ranking the various patent law focused blogs from around the world. His rankings are based on website popularity and popular influence with three primary inputs: (1) voting by readers; (2) Technorati.com ratings (based on links to the site); and (3) Alexa.com ranking of website popularity. I’m happy that Patently-O received the top rank. However, I encourage you to check-out the other blogs on the list. I read about 15 of them on a regular basis. Thanks Gene.

Quinn’s 2009 Patent Blog Ranking:

1. Patently-O
2. IPWatchdog.com
3. IP Kat
4. Spicy IP
5. Patent Baristas
6. Intellectual Property Watch
7. Patent Docs
8. 271 Patent Blog
9. BlawgIT
10. Patent Prospector
11. The Invent Blog
12. IP Think Tank and The Prior Art
13. -
    
14. Orange Book Blog
15. IPJUR and European Patent Caselaw
16. -
    
17. Promote the Progress
18. IP NewsFlash
19. Anticipate This!
20. Patentably Defined
21. India Patent
22. Intellectual Asset Management
23. Against Monopoly
24. Patent Circle
25. I/P Updates
26. PHOSITA
27. IP Spotlight
28. Chicago IP Litigation
29. The IP Factor
30. Patent Arcade and File Wrapper
31. -
    
32. Securing Innovation
33. Patents 101 and IP Estonia
34. -
    
35. PatLit
36. Just An Examiner
37. The Business of Patents
38. Patentability
39. Inventive Step
40. Holman’s Biotech IP
41. Washington State Patent Law
42. California Biotech Law
43. Patent Infringement Updates and Patent Assassins
44. -
    
45. Russian Patents
46. Georgia Patent Law
47. Patentnapsis
48. Honoring the Inventor
49. OC Patent Lawyer
50. Nanomedicine & IP

The Pope on Patents

In a recently published encyclical letter, Pope Benedict XVI has taken a stand against strong patent rights because of they way that the exclusive rights of patents tend to promote wealth inequality at the expense of development in the world's poorest countries.  

"On the part of rich countries there is excessive zeal for protecting knowledge through an unduly rigid assertion of the right to intellectual property, especially in the field of health care."

The intellectual property statements only make up a few lines in the 144-page letter. However, they fit with the overall theme - that relying solely on monetary greed as an incentive does not lead to the right kind of development and actually creates instability.

The letter does not edify official Church doctrine, but it is used by Church leaders around the world in setting priorities.

In response, the IPO released a statement that it is "working to educate on the incentives that IP rights provide for advancing knowledge and creating jobs."

• See “Encyclical Letter Caritas In Veritate Of The Supreme Pontiff Benedict XVI To The Bishops Priests And Deacons Men And Women Religious The Lay Faithful And All People Of Good Will On Integral Human Development In Charity And Truth,” June 29, 2009. [Link][Related Post]

Bits and Bytes No 120: In the News

• PTO Funding Emergency: Andrew Noyes reports on an emergency funding bill for the PTO that would allow the agency to use surplus funds from its trademark budget to fund the growing shortfall on the patent side. Link. The current trademark budget surplus is estimated at $60 million. [Diane Bartz’s Reuters article on the same topic]
• John Duffy: Michael Orey of BusinessWeek has published an article recognizing the ongoing contributions of Professor Duffy: A Scholar-Activist Challenges U.S. Patent Law.
• Todd Dickinson: Joff Wild of IAM recently interviewed former PTO Director Todd Dickinson and posted the 9 minute video on YouTube. [Watch the Video][IAM Blog]. Dickinson walks through the three major priorities for the next director: Priority I: Reestablish the stakeholder relationship with the PTO; Priority II: Pendency & backlog (in the shadow of the financial shortfall); Priority III: Quality.
• False Marking: PUBPAT continues its campaign against false marking. Earlier, I reported on its false marking lawsuits against Cumberland (Sweet'N Low) and Iovate (Xenadrine). Last week, the nonprofit filed a false marking suit against McNeil (Tylenol) and filed an amici brief in Pequignot v. Solo Cup. In that brief, PUBPAT argues that damages should be based on "each falsely marked article." The brief also spells out some of the harms of falsely marked products:

  "The reason why companies mark and advertise their products as patented is because they expect doing so will provide them some benefit in the marketplace, such as by winning over consumers, building a superior brand associated with innovativeness, implying that their product has been reviewed and approved by the federal government, or implicitly threatening actual or potential competitors with allegations of patent infringement. Thus, when products are falsely marked or advertised as "patented" or with the numbers of expired, invalid, or inapplicable patents, such false marking provides these potential benefits to the false marker/advertiser without any commensurate justification and, as such, creates the potential to negatively impact the marketplace, the public interests, and the integrity of the patent system."

• File Attachment: SoloAmiciBrief.pdf (1100 KB)
• File Attachment: PUBPAT v McNeil - Complaint.pdf (321 KB)

Patently-O Bits and Bytes No. 119

• The AP on Hugo Chavez: Venezuelan officials plan to invalidate some pharmaceutical patents and allow domestic manufacturers to produce licensed medicines, an action that could cause shortages and scare off foreign investment, industry leaders said Sunday. [AP][via PatentHawk]
• BPAI Data: An updated version of yesterday’s paper on BPAI decision data is available online here: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1423922. Comments are welcome.
• New Blog: Rocket Docket IP Litigation (E.D. Va. Patent Focus). The blog is edited by the folks at Williams Mullen. Their latest post is an update on the false marking litigation against Solo Cup.
• National Patent Jury Instructions: A comittee assembled by Chief Judge Michel has released its set of model jury instructions. Although Judge Michel assembled the committee, the introduction makes clear that the instructions “have not been endorsed by the Federal Circuit Court of Appeals, and are not “official” jury instructions.” However, the instructions are likely to serve as the ongoing model. http://www.nationaljuryinstructions.org/.

Bits and Bytes No. 118: Kappos & Dudas

From Hal Wegner:

A few weeks ago Dave Kappos was involved in a webinar with Jon Dudas which provides some perspectives on the new Director’s views. It is available at http://www.foley.com/news/event_detail.aspx?eventid=2779. The webinar itself is available at http://www.foley.com/multimedia/multimedia_detail.aspx?multimediaid=58221724.

The May 8, 2009 webinar focuses on patent reform; technology issues; and reexamination.

A final version of the new Patent Case Management Judicial Guide is in print. It is also freely available on SSRN.