Patent Law Blog (Patently-O)

Bits and Bytes for March 3, 2009

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."

Applying Supreme Court Precedent

Carlsbad Technology v. HIF Bio (Supreme Court 2009)

The Supreme Court held oral arguments in this case on February 24. In its opinion, the Federal Circuit held that it lacked appellate jurisdiction to review a district court order to remand a case back to state court. The Federal Circuit's decision goes against precedent set by the Third, Fourth, Fifth, Sixth, Seventh, Eighth, Ninth, Tenth and Eleventh Circuits. And, the case appears in conflict with the Supreme court's Powerex v. Reliant (2007) decision.

During oral arguments the Justice Roberts was considering when lower courts follow Supreme Court holdings when he made the following statement:

CHIEF JUSTICE ROBERTS: Well, they don't have a choice, right? They can't say, I don't like the Supreme Court rule so I'm not going to apply it, other than the Federal Circuit.

(Laughter).

Ninth Circuit Applies Federal Circuit Law in Interpreting Contract to Assign Patent Rights

Los Angeles Biomedical Research Institute v. White (9^th Cir. 2008)

The Federal Circuit has repeatedly held that contracts to assign patent rights should be interpreted under state law. In a recent opinion, the Ninth Circuit came to the opposite conclusion — holding that “patent law terms” in an employment contract should be interpreted according to to patent law principles.

Dr. White’s Patent & Copyright Agreement with LA Biomed read as follows:

I understand and agree that every possibly patentable device, process, or product hereinafter referred to as “invention”, which I conceive and/or reduce to practice while employed by the Institute, or during the course of my utilization of any Institute research facilities, shall be examined by the Institute to determine rights and equities therein in accordance with the Institute’s Patent and Copyright Policy.

It appeared that the jury interpreted the contractual term “conceive” as a solo activity, while patent law allows for joint conception. The appeal focused on whether the jury should have been informed of law of inventorship and conception as it relates to patent law.

On appeal, the 9^th Circuit first agreed that California law requires agreements regarding patent rights be interpreted according to standard contract law and are not generally bound by the limits of patent law. In this case, however, the appellate panel found that the patent laws should be applied in this case when interpreting the contract language. This case may well be unique because the contract specifically noted that patent law principles “shall be taken into consideration.”

Consequently, the court held that the jury should have been properly informed of the law of conception — especially as it relates to joint inventorship.  “[W]e conclude that it was clear error for the district court … exclude the co-inventorship language.”

Notes:

• Read the decision [LINK].
• Comment by Professor Mark Patterson: “The L.A. Biomed. case seems to me uncontroversial as a matter of contract law.  I would view it as saying that trade usage regarding patent law terms should be used to interpret contracts, just as trade usage is typically used in contract law.  And then the Federal Circuit's decisions will be evidence of -- indeed, an authoritative source of what is or will become -- trade usage.  So I would say that the court is not so much applying Federal Circuit law directly as using it as evidence of trade usage.  I don't anything in the opinion is inconsistent with that.”