Patent Law Blog (Patently-O)

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]

Claim Construction in the Abstract

By Dennis Crouch

Typhoon Touch Tech. v. Dell, Lenovo, Toshiba, Fujitsu, Sand Dune Ventures, Panasonic, Apple, HTC, and Palm (Fed. Cir. 2011)

Touch screen technology has taken-off as an important element of consumer electronics. Typhoon's US Patent Nos. 5,379,057 and 5,675,362 cover various embodiments of a "portable keyboardless computer system" with a "touch-sensitive screen."

Typhoon appealed an E.D. Texas ruling that its patents were invalid and not infringed. The appeal focused on the claim construction that served as the basis for both invalidity and non-infringement. The appellate decision is notable for the detached process that the court used to consider claims elements at issue. The opinion never discussed the crux of the invention or its contribution to the art and instead simply looked to the disputed claim terms and the relation of those terms in the specification (as required by Phillips v. AWH).

This week, I participated in a roundtable discussion at Yale Law School sponsored by the Kauffman foundation and by Yale's Information Society Project (ISP). A substantial amount of the discussion focused on problems stemming from our current claim construction process and our ongoing focus on claim language as opposed to invention or its contribution to the art.

For patent attorneys prosecuting patents, the claims are often seen as equivalent to the invention. The new patent act supports that definition by shifting focus away from the invention and instead onto the "claimed invention." Thus, the new § 102(a)(1) asks whether "the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention." The new statute's sole focus on invention as claimed is largely just a codification of fairly well accepted Federal Circuit precedent without much thought of the consequences. Of course, broad subject matter eligibility described in State Street Bank and the TSM test for obviousness were, until quite recently, well accepted Federal Circuit precedents as well. In the past few years, the Supreme Court rolled-back the clock on those issues – returning focus to pre-1982 case law. For "invention" however, the new statute appears to lock-in the claimed-invention as the ongoing focus of patent law.

Judge Kimberly Moore highlighted this issue in her recent dissent from the court's denial of en banc rehearing of Retractable Technologies, Inc. v. Becton, Dickinson and Company (Fed. Cir. 2011). In that opinion, Judge Moore noted that the approach of the panel decision in Retractable is evident of a major divide amongst Federal Circuit judges as to whether the inventor's contribution to the art – "what the inventor actually invented" – should be considered in the claim construction process.

This week, my patent law students each argued a mock-Markman hearing – revisiting the facts of Nystrom v. Trex and arguing over whether Ron Nystrom's claimed decking "board" should be limited to cover only to wood cut from a log. That litigation was interesting because it involved five different court decisions on the proper construction of the term. The final appellate decision narrowed the term's meaning in a way that allowed Trex's composite planking to avoid infringement.

Claim construction has become a fundamental aspect of every patent case – even to the extent that Section 101 patentable subject matter decisions turn on the meaning bestowed upon particular claim terms. For patent attorneys, all of this focus on claim meaning puts more pressure on the drafting of the claims and the specification. The sad thing about Nystrom's patent is that he would have easily won the case if the patent attorney who drafted the application had thrown-in language indicating that a "board" could be made of various materials, not just wood cut from a log. This counterfactual conclusion is sad for Nystrom as the inventor, but it is also sad that such a major weight is placed on non-inventive boilerplate language. In my mind, the importance of claim construction should push the USPTO to do a better job of ensuring that the terms of issued patents are well defined.

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The Typhoon decision is also notable in the way that the court narrowly interpreted functional claim limitations. As background, Typhoon's claim was directed to a "computer" that included various elements including a "memory for storing [a] data collection application." Typhoon argued its claimed invention only required that the memory be capable of storing the data collection application. However, the District Court Judge Davis and Federal Circuit agreed that the proper construction required that memory actually be used for storing the data collection application. In so holding, the courts looked to the specification and found that the described embodiments all had memories that actually included the application rather than just the capability.

###

Finally, the court looked at Typhoon's "Means for cross-referencing" limitation. The district court held that limitation invalid as indefinite under 35 U.S.C. § 112 because the specification did not include an algorithm adequate to provide sufficient structure for the means-plus-function limitation, citing Aristocrat Technologies Australia PTY Ltd. v. International Game Technology, 521 F.3d 1328, 1334 (Fed Cir. 2008). On appeal, the Federal Circuit rejected that conclusion – finding that the specification did disclose a cross-referencing algorithm in plain language in the text of the specification. The court went on to write that "computer code is not required to be included in the patent specification." Rather, what is required is disclosure so that one of ordinary skill in the art would recognize the structure as linked to the claimed function.

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• Judge Newman wrote the court opinion and was joined by Chief Judge Rader and Judge Prost;
• The Appellant-Patentee is represented on appeal by Charles Wolfe (Blank Rome);
• Ed Reines (Weil Gotshal) and Joe Re (Knobbe) were co-lead-counsel for all the appellee-defendants. Briefs were also signed by attorneys at K&L Gates, Baker Botts, Amster Rothstein, Perkins Coie, Covington & Burling, and Malloy & Malloy, as well as Eric Albritton from the Albritton firm.

AIPLA Meeting

This Friday, I will be at the AIPLA annual conference in Washington DC as part of a panel on Blogging.  I have not done a blogging seminar in a long time — one of the last ones was in 2006 when Cathy Kirkman and I co-hosted a conference on the law of blogs and business of legal blogs.

The session is 2:00 pm –  3:30 pm on Friday, October 22. I will be speaking along with my former colleague Don Zuhn (MBHB, Patent Docs), Aaron Feigelson (Leydig, 1201 Tues), Karen Hazzah (Thomas Kayden, AllThingsPros), Jonathan Frieden (Odin Feldman, ECommerceLaw), and Jake Ward (Fraser Clemens, AnticipateThis).

I look forward to seeing you there!

Read the Annual Meeting Program

Bits and Bytes No. 131

• IP Czar: George Mason visiting professor Victoria Espinel has been selected as the IP Enforcement Coordinator for the Administration - known as the IP Czar. The role will likely be more focused on international trademark and copyright issues rather than patent law issues. Her nomination must be confirmed by the senate. [LINK]
• DC in DC: Next Thursday (1:30 p.m., October 1), I'll be the opening speaker in GWU's IP Speaker Series. My presentation considers the proposed first-to-file legislation and includes a new set of data the (low) frequency that applicant's attempt to rely on their invention date during prosecution. The talk is open to GWU students, alumni as well as "friends." Other speakers include Edward Walterscheid (Oct. 27); Zahr Stauffer (Oct. 29); Joseph Miller (Nov. 5); and Chris Cotropia (Nov. 19). [LINK]

Patently-O Bits and Bytes No. 130

New Job Postings:

• Klarquist Sparkman (Portland) is looking to hire a patent attorney or patent agent with an advanced degree in organic chemistry and 3+ years patent prosecution experience.
• AstraZeneca has listed four opening:
• • Senior Patent Attorney - Neuroscience (Wilmington, DE)
  • Principle Patent Attorney - Neuroscience (Wilmington, DE)
  • Senior Patent Litigation Attorney (Wilmington, DE)
  • Senior Patent Attorney - Oncology and Infection (Boston, MA)
    
• Leading-Edge Law Group - a small boutique firm in Richmond, VA is looking to find an experienced patent attorney to join their firm.

Upcoming Events:

• Sept 25 at Santa Clara Law School - Sources of Uncertainty in Patent Litigation. This looks to be an awesome half-day event at a low price: $150 for law firm folks; $75 for in-house counsel.
• Nov 5-3 in NYC: TechNet Patent Forum. Use code EAG476 to get a $300 discount.

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).

Lichtman on IP (with free CLE credit)

Professor Lichtman has continued his well done monthly IP Colloquium. Listen online for free CLE credit in several IP-heavy states. The latest posts include:

• Everyone hates DRM with Ed Felton and Randy Picker (Apr. 2009)
• Statutory damages for downloading music with Charlie Nesson and others (Feb. 2009)
• A conversation with Chief Judge Michel (Jan. 2009)
• Privacy in a networked world with Eric Goldman and Dan Solove (Dec. 2008)
• In re Bilski with John Duffy and Rob Merges (Nov. 2008)

Link: http://www.ipcolloquium.com.

Bits and Bytes No. 104: Past and Future Events

In March, GW and the FCBA hosted a symposium on the Federal Circuit Court of Appeals. Video of the symposium can be seen on cSPAN:

• "The Court - Giving Texture to the Institution of the Court" Watch on C-SPAN
• "The Complexity - Views on the Circuit's Complex Subject Matter from the Solicitors General" Watch on C-SPAN

Upcoming Events:

• Patent Calendar: www.patentlyo.com/calendar
• May 1–3 – San Francisco IP Law Assn: http://www.sfipla.com/seminar.html

Top Patently-O Content for the past 12 months:

1. http://www.patentlyo.com/patent/2008/07/the-death-of-go.html
2. http://www.patentlyo.com/patent/2008/10/in-re-bilski.html
3. http://www.patentlyo.com/patent/2008/02/bilski-full-caf.html
4. http://www.patentlyo.com/patent/2008/06/supreme-court-d.html
5. http://www.patentlyo.com/patent/2008/04/ex-parte-bilski.html
6. http://www.patentlyo.com/patent/2005/04/how_should_a_fu.html
7. http://www.patentlyo.com/patent/2009/03/tafas-v-doll-some-rules-valid-others-invalid.html
8. http://www.patentlyo.com/patent/2008/07/outsourcing-of.html
9. http://www.patentlyo.com/patent/2009/03/patent-reform-act-of-2009.html
10. http://www.patentlyo.com/patent/2008/11/junk-patents.html
11. http://www.patentlyo.com/patent/2009/02/no-no-words-what-words-do-you-avoid-in-patent-applications.html
12. http://www.patentlyo.com/patent/2008/11/post-bilski-bpa.html
13. http://www.patentlyo.com/patent/2009/03/dear-patently-o-how-do-you-react-to-the-following-letter.html
14. http://www.patentlyo.com/patent/2009/01/ex-parte-marius.html
15. http://www.patentlyo.com/patent/2008/11/ex-parte-hallig.html
16. http://www.patentlyo.com/patent/2008/05/cafc-hears-en-b.html
17. http://www.patentlyo.com/patent/2008/12/cafc-affirms-pt.html

Bits and Bytes No. 94

Inventors

• I used a software algorithm to count the number of inventors in each utility patent application published June 2007- February 2009. The histogram below shows the result. The median application has two inventors. One German application lists 100 inventors (I'll post the patent number when I get back to my office).

Revisiting Upcoming Conferences

• Northwestern Law School's Journal of Technology and Intellectual Property (NJTIP) is putting on a great event in Chicago on March 6, 2009 (Friday).
• Howard University's Institute of Intellectual Property and Social Justice IP Symposium – March 5-6. Day two will focus in patent issues and will include a year in review by Irving Kayton, a discussion of design patent issues by Jon Wood (Bridgestone); and panels that include Chief Judge Michel and Judge Linn as speakers.
• Federal Circuit Year in Review (St. Louis) – March 13 – I'll be presenting this one hour session sponsored by the Bar Assn. of Metropolitan St. Louis.
• The IP Law Summit - March 17-19 - hosted by the marcus evans company will be a nice event in Ponte Vedra, Florida. I will be speaking there along with Marc Began (Novo), Manny Schecter (IBM), Bruce Schelkoph (Cummins), Scott Kief (Wash U), Bruce Pokras (Pfizer), Colin Raufer (Boeing), Mony Ghose (BD), Ken Collier (Medtronic), Scott Reid (Lenovo), Chris Turoski (Cargill), Hope Mehlman (Regions Financial), Tom Boshinski (Mead), Wendall Guffy (Nestle), Tim Wilson (SAS), Robert Renke (Flashpoint), John Parrish (Sanofi), Mike Jaro (Medtornic), and Phyllis Turner-Brim (Intermec).
• The Federal Circuit Symposium – March 18. Sponsored by the FCBA and GWU Law School. Speakers include Chief Judge Michel, and Judges Friedman, Newman, and Rader; Senator Specter (invited); a heavy Supreme Court perspective with the five former solicitors general; academics speaking include John Duffy, Arti Rai, John Golden, and Rochelle Dreyfuss may largely focus on the role of the Federal Circuit.
• Fordham IP Conference (NYC) - April 15-16. This conference has strong cross-Atlantic ties and will include judges and scholars from both continents.
• IAM's IP Business Congress in Chicago – June 21-23 – As the name suggest, this annual event focuses on how IP can be used in business. Sessions include "brand IP, strategic IP and business alignment, and IP value creation, as well as a range of breakouts examining legal, financial, strategic and business-related topics."

Patently-O Bits and Bytes No. 93

Upcoming Events

• Northwestern Law School's Journal of Technology and Intellectual Property (NJTIP) is putting on a great event in Chicago on March 6, 2009 (Friday). Bob Irvine will be debating Bilski with Lauren Katznellenbogen. Irvine is a partner at my former firm, MBHB – He is amazingly smart and was my resource whenever I had difficulty understanding some complex technology. The debate is moderated by blogger R. David Donoghue. (The notice includes a disclaimer that the positions "are for advocacy purposes" and might not reflect the positions of the parties or their firms. Other speakers include Judge Holderman, Dr. Chris Singer (of Patent Docs and MBHB), Profs Seymore and Sag, and Mike Baniak (also of MBHB). [Symposium Website]
• The IP Law Summit - March 17-19 - hosted by the marcus evans company will be a nice event in Ponte Vedra, Florida. I will be speaking there along with Marc Began (Novo), Manny Schecter (IBM), Bruce Schelkoph (Cummins), Scott Kief (Wash U), Bruce Pokras (Pfizer), Colin Raufer (Boeing), Mony Ghose (BD), Ken Collier (Medtronic), Scott Reid (Lenovo), Chris Turoski (Cargill), Hope Mehlman (Regions Financial), Tom Boshinski (Mead), Wendall Guffy (Nestle), Tim Wilson (SAS), Robert Renke (Flashpoint), John Parrish (Sanofi), Mike Jaro (Medtornic), and Phyllis Turner-Brim (Intermec).

Stays pending reexamination:

• I continue to be surprised that courts grant stays of litigation pending re-examination – especially inter partes reexaminations which tend to be incredibly slow. In Wall Corp. v. BondDesk Group, LLC (D.Del. Feb. 24, 2009), district judge Gregory Sleet granted the defendant's motion to stay the litigation pending inter partes reexaminations. The fact that the reexamination was inter partes was especially important to the court since the potential "estoppel will resolve many of the invalidity issues and streamline the litigation." In a decision last week in Affinity Labs v. Dice Electronics, LLC, (E.D.Tex. February 20, 2009), the Texas-based Federal Court denied a stay pending ex parte reexam noting that the ex parte approach allows the "Defendant to lay behind the log, hoping for favorable developments with the passage of time. Instead of streamlining the process, Defendants' choice guarantees the imposition of additional costs … and indicates a lack of desire to resolve the issues in the case in a timely manner."

Late Patents:

• I recently discussed maintenance fees here, here, here, and here. An interesting website on the topic is latepatents.net. (Hat tip to John Spevacek)

Patently-O Bits and Bytes No. 68: People in the News

IP Law Hall of Fame New Inductees (Sponsored by IAM) [LINK]:

• Jane Ginsburg – Columbia Law Professor; written extensively on the intereconnection between copyright and trademark law.
• Francis Gurry – New Director-General of the World Intellectual Property Organisation (WIPO)
• Dolores Hanna – Retired partner from Bell Boyd & Lloyd. Former head of INTA, IPLAC, WBA of Illinois, etc.
• Michael Kirk -- Recently retired Executive Director of the American Intellectual Property Association.
• Niels Reimers – Former director of Stanford University's Office of Technology Licensing. Founder of AUTM.

New IPO Board Members:

• Wayne Sobon (Accenture)
• Roger Gobrogge (Dow Corning)
• Michelle Lee (Google)
• George Johnston (Hoffman-La Roche)

Washington University:

• Tonight WashU will host the VP debate
• On Friday, October 10, I will be speaking at WashU law school to a much smaller crowd. (3:00 – 4:00pm) The topic trademak law and the protection of designs. I believe that CLE credit is being arranged for the free event. [LINK]

Law Job Map:

Find your patent law job via Google maps. [PATENT LAW JOB MAP]

Upcoming Events:

• January 26, 2007 at the San Jose Museum of Art: We’ll be discussing transnational scope of U.S. patent laws. $225 for practitioners; $0 for academics and government types. [LINK]. West-coast heavy hitters include Lemley (Stanford), Keiff (Hoover Institution), Ochoa (SCU). Also starring Dan Burk (MN).  Three big bloggers, Eric Goldman, Michael Geist, & Dennis Crouch.
• February 16, 2007 at UC Boalt Hall (Berkeley): Perspectives on Patent Law and Innovation. Judges Linn, Prost, Rader, Whyte, & Patel, etc.[LINK]
• February 23, 2007 at Duke Law School: IP Hot Topics Symposium (with CLE credit). Blockbuster panels on patents and file-sharing. Judge Dyk has the keynote lunch address. [LINK]
• February 23, 2007 at Ohio State: The Future of Patent Reform [LINK]
• March 15–16, 2007 at DePaul (Chicago): [LINK]
• March 29, 2007 at Catholic Univ (DC): Ethical Issues in Patent Law [LINK]

Amazing List of Upcoming Patent Conferences

• Software Patents:
• MIT & Boston University are hosting a conference on Software Patents, subtitled “a time for change?” Boston, November 16 (reception only) and 17 (Registration only $35).
• I will be moderating the conference introductory panel that includes Robert Barr (former CISCO chief patent counsel), Rochelle Dreyfuss (the Pauline Newman Professor of Law at  NYU), Brian Kahin (Fellow at CCIA), and James Heald (FFII – “Maybe there are a few companies which could profit from software patents, but nobody can seriously argue that software patents are useful for the whole industry.”).
• Biotech Patents:
• I am moderating a panel on Supreme Court issues at the Biotech Patents conference here in Boston on November 29–30 hosted by American Conference Institute. More Info. Get $200 off by using this code: Keycode 618L07.S.
• Patentable Subject Matter:
• GWU is hosting its conference “what’s ahead on highway 101” on November 3 in DC.
• Patent Litigation Strategies:
• BNA is hosting its second conference based on the excellent book — Patent Litigation Strategies. Washington, DC on November 15–16.  More Info.
• Markman: 
• Suffolk is hosting their one-day conference on patent claim interpretation on October 20 in Boston. More Info.
• Supreme Court and Patent Reform Issues:
• IP Powerhouse Santa Clara is hosting what looks like a great conference on Supreme Court issues — past, present, and future — with their conference Patent Policy in the Supreme Court and Congress. October 27 in Santa Clara.
• A Conversation with IP Judges:
• In Chicago, De Paul is hosting a one-day event with Judges Kozinski, Posner, and Wood, moderated by Professor Sag and Greg Vogler. November 2.

A better calendar — If you are interested in Academic Intellectual Property Conferences, Mike Madison hosts the master calendar here: http://madisonian.net/conferences/

 

Free PLI Briefing on Patent Bar Exam

• PLI is hosting a free briefing (web or phone) next Thursday (Sept 21) at 1pm Eastern. They will talk about the new exam format and give people some tips on studying.  Of course, they'll give you info on their own course -- it is the same course that I took with the same instructor, John White. (I passed). Signup for web or phone.

Upcoming Conferences

• Patent Litigation Strategies: BNA is hosting a couple of interesting conferences based on their excellent book — Patent Litigation Strategies. The first is September 27–28 in Palo Alto and they will hold the same conference in DC on November 15–16.  More Info.
• Markman: Here in Boston, Suffolk is hosting an interesting conference on patent claim interpretation on October 20. More Info.
• Biotech Patents: I’ll be moderating an interesting panel at Biotech Patents conference here in Boston on November 29–30 hosted by American Conference Institute. More Info.

 

Meet me at the ABA 2006 Summer IPL Conference June 21 in Boston

I will be at the ABA Summer IPL Conference on Wednesday and Thursday.  John Welch along with the ABA Staff have put together a "Bloggers' Corner" at the "get acquainted" reception on Wednesday, June 21st, from 6:00 to 7:00 P.M. The cage-match will start at 6:30 -- Battle-of-the-Blogs. Come see:

• John Welch, TTABlog;
• Matt Buchanan, PromoteTheProgress;
• Dennis Crouch, Patently-O;
• Ross Dannenberg, Patent Arcade;
• Lee Gesmer, MassLawBlog.com; and
• Stephen Albainy-Jenei, Patent Baristas;

For a brief description of the bloggers, read this flier. John Welch has put together a set of photos that vaguely represent the bloggers (although Dannenberg may actually be only an avatar). 

         

 

Buchanan, Crouch, Dannenberg, Gesmer, Welch, and the Coffee Meistro

Barkoff (Orange Book Blog) can’t make it

Upcoming FDA Conference and other TidBits

American Conference Institute has put together a number of upcoming patent related conferences that look excellent.  One of our partners recently attended the FDA bootcamp in NYC and had a great time. I've listed a couple of the programs, but there are many others:

• IP Due Diligence - (Life Science focus) June 26, NYC: Complete Guide for M&As, Licensing, and Other Collaborations;
• FDA BootCamp - Sept 18-19, Chicago: Basic Training for Products Liability and Patent Lawyers.

Other Upcoming Events: I will be at the ABA's Intellectual Property Law Summer Conference in Boston from June 21-24.  Please introduce yourself [I look like this] or contact me to set up a time to meet.  The ABA has scheduled a "meet the bloggers" event at 6:00 on Wednesday evening.  I'll be there along with John Welch, Matt Buchanan, and others. 

Conference: PLI Webcast on eBay v. MercExchange

On June 14, 2006, you might want to take an hour break (1–2pm EDT) to take part in an audio webcast discussing: Permanent Injunctions in Patent Infringement Cases After eBay Inc. v. MercExchange L.L.C. The PLI CLE will be moderated by Professor John Duffy and will feature the two attorneys who argued the case: Carter Phillips and Seth Waxman.  Professor Duffy is one of the few patent attorneys who was also a Supreme Court clerk (Scalia).  Topics for discussion include:

• The changed landscape of patent disputes
• An analysis of the Supreme Court’s unanimous decision
• An analysis of the two important concurring opinions
• The application of the 4-factor permanent injunction test in patent infringement cases

Register here. $299. 

LiveBlogging The Blog Law Conference

Day one of our blog law conference has been a great success.  Cathy Kirkman of Wilson Sonsini and I are co-hosts of this LSI conference that has been billed as the first CLE covering the “law of blogs.”

• Joe Gratz has a synopsis and photos. 
• Denise Howell brings her own insight and notes that  “[t]omorrow should be particularly exciting, featuring among other things EFF's Kurt Opsahl, fresh off today's oral argument in Apple v. Does.”
• Veteran David Maizenberg noted his highlight — he met blog diva Denise Howell in person. (Tomorrow I get to moderate a panel with Denise, Bennet Koren, and Greg Kopta).
• Cathy Kirkman gives some links.
• Kevin O’Keefe gave very well received talk and has some notes at his blog.
• Some discussion today of Robert Scoble and his disruptive book Naked Conversations (with Shel Israel).

Upcoming CLE's

This Week:

• Patent Preparation and Prosecution, through Dunes CLE.  April 6–7 in Las Vegas.  Patently-O is a media sponsor of the event, and I will be presenting on Friday afternoon.
• ABA’s IP Law Conference, April 6–8 in Arlington, VA (DC).  This conference is worth it for the opening panel — Mark Banner, Chief Judge Michel, Judges Ellis (E.D.Va) and Illston (N.D.Ca), Professor Kimberly Moore, Joe Re (KMOB), Bob Krupka (K&E), Dale Cendali (OMelveny), William Lee (Wilmer). Best practices in IP Trials.

Coming Soon:

• Blog Law and Blogging for Lawyers, through LSI.  April 21–22 in San Francisco.  I am co-chairing this conference and am very excited about the excellent panel that we’ve pulled together.  More info here.
• PTO Business Method Partnership Meeting, May 3 at the USPTO. Meet the examiners and supervisors behind your indefiniteness and unpatentable subject matter rejections. . . . Actually these folks are very cool and hold this meeting to answer questions and get input on how things are going.

Upcoming Patent Law Conferences

December 5,  16th Annual PTO Day, Washington, DC – IPO

January 3–7, National CLE intellectual Property Law Conference, Aspen Snowmass — ABA-IPL, INTA, FCBA (Skiing + Learning!) (Big names like Dunner, Whealan, McKelvie & Rogan).

February 1–4, Mid-Winter Institute, La Quinta, California — AIPLA (I will be presenting “Patent Law Year in Review.”) (Southern California in February!).

February 17, Modern Patent Claim Construction Practice, Chicago — LSI.

February 27–28, Calculating and Proving Patent Damages, San Francisco — LSI.

 April 20–21, Blog Law, San Francisco — LSI (Cathy Kirkman & I are co-chairs).

Chief Judge Michel Calls Meeting of the CAFC Bar

Chief Judge Michel of the Court of Appeals for the Federal Circuit has invited members of the bar to attend a discussion at the court on Tuesday, November 15, 2005 at 2:00 pm in Courtroom 201.

Judge Michel will discuss several topics as part of his effort to continue to build a better relationship between the bar, academics, and the Court.  Planned topics include: effective appellate advocacy, the attorney's role as an officer of the court, and the court's internal process.

The event will be held in the Howard T. Markey National Courts Building, 717 Madison Place, NW, Washington, D.C. There is no charge and all are welcome. Those interested in attending are requested, however, to RSVP by sending an e-mail to webmaster@cafc.uscourts.gov.

IP Due Diligence: A How-To Guide (Free Webinar Thursday Oct 27)

Two partners at MBHB (my firm), Jim McCarthy and Emily Miao, have put together what looks to be a great “webinar” on intellectual property due diligence to be held on Thursday, October 27, 2005 at 2:00 pm CST. Issues to be discussed:

• When should a due diligence review be conducted?
• How can validity of a patent or strength of a trademark be determined?
• What can be done if any intellectual property is the subject of a lawsuit?

There will be a Q&A session at the end as well.

 

Please contact Megan McKeon at 312.913.2105 or mckeon@mbhb.com for more information or to register. (Must register by 1:00 pm CST).

CAFC Goes on Tour to Chicago

The Court of Appeals for the Federal Circuit (CAFC) has announced that it will be “Sitting in Chicago, Illinois” for the week of November 8, 2005 — providing a great opportunity for students and practitioners who rarely get to see the CAFC in action. 

Schedule (CAFC patent cases):  

Tuesday, November 8, 2005, 10:00 A.M., University of Chicago Law
       04-1609   GOLDEN BLOUNT V RBT H PETERSON CO

Tuesday, November 8, 2005,  2:00 P.M., DePaul Law
       05-1113   VIAD CORP V STAK DESIGN
Wednesday, November 9, 2005, 10:00 A.M., U.S. District Court
       05-1122   OMEGA ENGINEERING V RAYTEK CORP
Wednesday, November 9, 2005,  2:00 P.M., Chicago-Kent Law
       05-1126   GRAYZEL V ST. JUDE MEDICAL
Thursday, November 10, 2005, 10:00 A.M., Northwestern Law
       05-1144   HARRAH'S V STATION CASINOS

 

I expect that each venue will have a good crowd.  While all of these are “open to the public,” some will be more “open” than others and may require advanced seating.

 

As we move forward, I will provide more of a preview of these cases.  Please let me know if you have information regarding either the hearing or the cases. 

 

Dennis

312.913.3316

crouch@mbhb.com

Upcoming Conferences

I was hoping to be at the 2005 IPO annual meeting in Seattle (Sept 11–13). Unfortunately, a conflict crept its way into my schedule. I will be at the 42nd Annual Corporate Patent Seminar September 19 - 20 in Chicago. (Still time to register if you do it now).  Another interesting conference will held September 16 in Las Vegas. (www.dunescle.com).

Links:

• Link: Sept 11–13 IPO Meeting in Seattle
• Link: Sept 16 DUNES CLE in Vegas
• Link: Sept 19–20 Corporate Patent Seminar in Chicago

Patently-O Patent Law Blog wins TechnoLawyer Award as Best Practice Area Blog

I am happy to announce that Patently-O was awarded the TechnoLawyer @ Award as the Favorite Practice Area Blog for 2005.  This award means a lot to me because it was Patently-O readers who made it happen.  I would like to personally thank everyone who took time to vote. (Drop me a line and I’ll take you out to coffee).

Runners-up in the category include Sabrina Pacifici excellent law & technology blog beSpacific and Broc Romanek’s corporate & securities law blog at TheCorporateCounsel.net.  Fellow Chicagoan Bryan Sims of James, Gustafson and Thompson was named “Technolawyer of the year.”

2005 USPTO Partnership Meetings Scheduled for May 4, 2005

On Wednesday May 4, the Patent Office is holding a couple of “Customer Partnership Meetings.”  These meetings are designed to provide insight into how the patent office handles patent applications and tend to give some informal insight into peculiarities of particular technology areas. They are also free of charge.

1) Nanotechnology

The PTO has a newly formed Nanotechnology art unit class.  The Wednesday discussion will provide a look at how the new art unit is collecting and searching the prior art.  In addition, an industry panel will give feedback to the PTO and participants.  There will also be time for an open floor discussion.  Although the deadline for signing up for the conference has passed,

there is still some room for those interested.  Contact Jill.Warden@uspto.gov.

2) Business Methods

Because of a popular believe that business method patents are of lower quality, the PTO has instituted a number of initiatives to improve quality in the art unit.  The PTO is focusing on speeding up a process that currently involves long delays.  John Love, director of art unit handling business method patents as well as other members of the unit will be available to discuss these issues.  This conference may be full — however Joseph.Thomas@uspto.gov may be able to fit you in.

Note: I’m planning to be at the business methods conference.  I look forward to meeting you there.

What Does it Take to Become a Patent Attorney?

The Practicing Law Institute is hosting a free audio webcast IP Career Series directed to young lawyers, law students, and people thinking about law school.  Their next audio briefing is titled “So You Want to Be a Patent Lawyer...," and will be held on April 18th from 1:00-2:00 p.m. EST.  John White (who helped me learn patent law) and Katharine Patterson will present topics that include:

• What does it take to become a patent attorney?
• What does it mean to say you're a patent attorney?
• What is life like as a patent attorney?

In answering the general questions, White & Patterson expect to delve into how to decide between a prosecution or a litigation career and other sub-topics such as: The distinction between patent agents and patent attorneys; Hot undergraduate technical degrees; Whether and when a PhD is important; Geographical areas; and how to find a firm that wants to hire you.

Registration info:

• Via Live Audio Webcast, April 18, 2005;
• Via Live Telephone Briefing, April 18, 2005;
• Register by Phone: (800) 260-4754. (Priority Code: CRA5-8BLG2).

2005 Business Methods USPTO Partnership Meeting

In May 2005, the USPTO will host its Spring 2005 Business Methods Customer Partnership Meeting.  This forum will likely provide a valuable opportunity for patent prosecutors to learn what goes on at TC 3600 beyond the MPEP. 

The director and managers of of the Business Methods workgroup will be there for an informal partnership meeting to discuss topics such as public pair, quality initiatives, the determination of statutory subject matter, and other topics specific to business methods.

DATES AND LOCATION: The partnership meeting will be held on Wednesday May 4, 2005, from 1:00 P.M.-5:00 P.M. at the USPTO MADISON AUDITORIUM, Concourse Level, Madison Building, 600 Dulany Street, Alexandria, VA 22313.

Attendance reservations are taken on a first-come first-served bases.  However, the USPTO may limit the number of attendees from any single organization or law firm. Therefore, organizations and law firms should designate an official representatives. No one will be permitted to attend without an accepted attendance request.

To attend, contact Joe Thomas via FAX: (703) 746-5897, or e-mail: joseph.thomas@uspto.gov by April 20, 2005. 

Links:

• TC 3600 Homepage
• Follow-up from the 2002 meeting
• TC 3600 Contacts

Patent Reform is in the Air: Are your views being heard?

The Patent Caucus is building steam as it crosses the United States -- Headed for Washington DC and patent reform legislation. 

If you have an interest in patent legislation, make sure your voice is heard now.

In a rare cooperative effort, the Federal Trade Commission (FTC), National Academies STEP Board, and the American Intellectual Property Law Association (AIPLA) are jointly hosting a series of town-hall conferences on patent reform and are discussing specific legislative proposals.  These agencies are working hard to get input from individuals and organizations interested in the patent process.  Conferences have already been held in San Jose and Chicago, with the final two stops in Boston (March 18) and Washington DC (June 9).  These town-hall meetings provide a rare opportunity to transparently assess proposed legislation and have your voice heard.  Transcripts of the meetings are being compiled and summaries will be provided to members of Congress during hearings on patent reform that are expected this year. 

Legislation is being proposed in a number of areas including: (i) a statutory fair use exemption from infringement liability for experimental use of a patented invention, (ii) a change to a first-to-file system and elimination of interference proceedings and other elements of , (iii) post grant opposition proceedings, (iv) changes to the wilfulness standard, and (v) expansion of prior-user rights.

These legislative proposals are still flexible and will be altered based on feedback from the town-hall meetings. 

I would like to invite you to take part in the remaining meetings.  If you cannot attend, feel free to contact me (crouch@mbhb.com) or William Rooklidge to present your proposal or other thoughts.

Links:

• Meeting and Registration Information from the AIPLA website.
• Matt Buchanan's Discussion of the Meeting and Patent Reform.
• PUBPAT has Questioned the Openness and Objectiveness of the Town Hall Meetings.  Professor Arti Rai, a PubPat director, is scheduled to speak at the Boston meeting. 
• PHOSITA's viewpoint with Links to Patent Reform Documents.
• Colette Vogele's viewpoint from the San Jose meeting.
• Dudas' Announcements at the Chicago Town Hall Meeting.

PTO Director Jon Dudas Commits to Patent Reform Measures -- saving applicants $30M+ annually

Jon Dudas, PTO Director, gave a great luncheon talk at the well attended Town Hall Meeting on Patent Reform held in Chicago.  In his speech, he gave a commitment to work toward patent reform measures in Congress.  Dudas has worked on Capitol Hill for many years and has strong relationships with key Republican members of Congress.  His active support will be critical for any patent legislation. 

The big news, however, were his clear statements on non-legislative steps the PTO is undertaking to solve a number of well known problems at the Office.  Specifically, Undersecretary Dudas spoke on (i) transparency; (ii) reexaminations; and (iii) appeals.  The best aspect of the ideas that Dudas presented is that the solutions can be implemented by the PTO without Congressional action.

(i) Transparency: Dudas is a big believer in the motto: "You cannot improve what you cannot measure."  With that in mind, he is implementing a number of new systems for measuring how well the PTO is doing in terms of both pendency and quality.  These include more in-process reviews as well as a reformation of the pendency statistic.

Historically, pendency has been calculated by looking at newly issued patents to determine how long they took to issue.  This calculation is obviously backward looking.  Now, the PTO is implementing forward looking measures to determine the 'firepower' of various technology areas.  Specifically, the PTO's firepower number is an estimate of, given the current backlog and workforce, how long would it take for a patent filed today to issue or be abandoned.  This number will be more difficult to calculate, but is necessary if the pendency number is to serve as any basis for improvement at the PTO.

(ii) Reexamination: At the conference, there is quite a bit of discussion on legislative efforts to enact a post-grant reform system through legislation.  However, Dudas believes that the reexamination procedures currently available provide a valuable means for improving patent quality of the most important patents (those being litigated).  The problem is that the PTO is much too slow in evaluating reexams.  Almost half of reexams take over two years and many over four years to complete.  In his talk, Dudas gave a commitment to cut pendency of all reexams to two years or less.  To ensure quality, Dudas plans to implement a supervisory review process of for all reexams.

(iii) Pre-Brief Appeal Conference: Finally, in an announcement that may save at least $30M in annual attorney fees, Undersecretary Dudas indicated his plans to introduced an opportunity for a pre-brief appeal conference to give the applicant an opportunity to discuss perceived errors by the Examiner in conference with the Examiner and at least one supervisor or SPE.  The thought is that this conference may eliminate a good portion of easy cases that are normally decided only after the applicant files a (costly) brief. 

I was able to talk with a number of great attorneys at the meeting, including Undersecretary Dudas, Greg Mayer, Matt Buchanan, Bill Rooklidge, and Herb Wamsley.

Upcoming Conferences

There are a few March '05 conferences here in Chicago that look promising.

1) FTC's town-hall meeting on patent reform will be held in Chicago on March 4, 2005.  Kenneth Dam, University of Chicago Professor and formerly of the Deputy Secretary of Treasury will be a keynote speaker.  USPTO Director Jon Dudas will be speaking as well. [Brochure] [Online Registration].

2) The Japan-America Society of Chicago is presenting a discussion of the recent Blue LED patent litigation and the meaning of 'reasonable compensation' for inventors in Japan.  Mr. Katsuyuki Akutagawa Senior IP Manager at Nichia Corporation and Yasuharu Nagashima founder of Nagashima, Ohno & Tsunematsu will be speaking.  Everyone is welcome, but there is a $50 fee for non-members ($25 for students). March 4, 2005 -- 2-4 pm at the Gleacher Center.  Pre-Registration is preferred.

3) The ABA's TECHSHOW will be held in Chicago on March 31-April 2.  Sessions include: How to Jump Start Your Practice; Meet the Bloggers; and Using Technology to Avoid Malpractice. [Registration] [More info here, here, here, here, and here].

Shoot me an e-mail if you would like to meet-up during these events.

Los Angeles: A discussion of the good & bad of outsourcing patent work

Loyola Law School in Los Angeles is hosting a conference on the cost effectiveness of outsourcing of patent prosecution that promises to raise a number of provocative issues. (Link).

Speakers include:

• Mozelle Thompson, former FTC Commissioner;
• Stephen Kunin, who was with the PTO until recently;
• James Sullivan, Assistant GC at FMC Technologies;
• and others

Logistics: Friday, March 4th from 8:30 a.m.-2:00 p.m. on the Loyola Law School campus in downtown Los Angles; $195 includes continental breakfast, lunch and all program materials; registration deadline February 28th.  Contact: IP-FOCUS@LLS.EDU

Upcoming Events in the Patent World

There are several events taking place next week that interest me, and might interest you. They are listed in chronological order.

1) Phillips v. AWH en banc oral arguments, Washington DC, Tuesday, February 8, 2005: This is going to be a big event at the Federal Circuit in DC. 

2) Chicago's IP Roundtable will be on February 10, 2005 and is hosted by Foley & Lardner.  IP attorneys who are interested in participating in a lively discussion of current hot topics are invited to attend.  The agenda includes a discussion of Phillips v. AWH, Rader's sharp dissent in last week's Fosamax case, Merck v. Integra at the Supreme Court, and patent extraterritoriality.

From the Flyer: Featured participants include the author of the most popular and widely read patent blog, "Patently-O", Dennis Crouch of McDonnell Boehnen Hulbert & Berghoff LLP . . . The co-moderators are Sharon R. Barner, Gregory S. Norrod and Harold C. Wegner. RSVP: Jean Shim jshim@foley.com. The conference venue is Foley & Lardner LLP, 321 N. Clark Street - Suite 2800, Thursday, February 10, 2005, 4:00 p.m. - 6:00 p.m. CST [RSVP deadline to guarantee space February 7, 2005]

3) The APLF is hosting a discussion of "What is Your Case Worth?"  This all important question is very useful to help plaintiffs and defendants plan their tactics in the courtroom and at the settlement negotiation table. Dan Boehnen of MBHB along with Aron Levko of PriceWaterhouseCoopers will lead the discussion that takes place February 11, 2005, 11:30-12:30 CST. RSVP: info@aplf.org in order to obtain toll free dial in number. The roundtable discussions are a free service to in-house counsel involved in IP matters that want to receive very timely and accurate summary information on business-relevant patent law matters, and APLF member firm attorneys.

4) FTC's town-hall meeting on patent reform will be held in Chicago on March 4, 2005.  Kenneth Dam, University of Chicago Professor [emeritus] and formerly of the Deputy Secretary of Treasury will be a keynote speaker.  USPTO Director Jon Dudas will be speaking as well. [Brochure] [Online Registration].

5 )The ABA's TECHSHOW will be held in Chicago on March 31-April 2.  Sessions include: How to Jump Start Your Practice; Meet the Bloggers; and Using Technology to Avoid Malpractice. [Registration] [More info here, here, here, here, and here].

Free Telephone Roundtable Today on Patent Damages

Date: December 8, 2004
Time: 12:30 PM Eastern Duration: 1 Hour
Phone in #: RSVP to info@aplf.org in order to obtain 1-800 dial-in number
Fee: Participation is FREE

Topic: Patent Damages--Beyond the Basics: Lost Profit Consideration

This discussion will center on patent infringement damages. The presentation will address damage issues beyond the basics of Panduit and Georgia Pacific including recent court decisions on lost profits, reasonable royalty and price erosion. Joseph Egan and Michael Chase, expert witnesses on economic damages with Navigant Consulting, Inc., will also provide case examples from some of their recent engagements and expert testimony. Curt Whitenack, a litigator from McDonnell Boehnen Hulbert & Berghoff LLP, will moderate.

I had forgotten to post this notice until I saw it on I/P Updates.

AIPLA Annual Meeting

The American Intellectual Property Law Association (AIPLA) has opened registration for its annual meeting to be held October 14 – 16, 2004 in Washington, DC.

This year's program promises to be an interesting one with sessions examining patent law in the Pacific Rim, the Doctrine of Equivalents, trademark dilution, Constitutional challenges to copyright, Federal Circuit decision making, prosecuting the difficult patent application, trademark fair use, licensing programs, and patent, copyright, and trademark litigation.

Jon Dudas, the ... Director of the USPTO will speak during the Friday Lunch Program. David Nimmer will address the Thursday Lunch program with a discussion of the recent accomplishments of the US Copyright Office.

In addition to the learning, AIPLA meetings always have their share of good times.