Patent Law Blog (Patently-O)

Patent Law Exam 2010: Part II

For the past several decades, an accused infringer wanting to challenge a patent's validity in court has been required to provide clear-and-convincing evidence of invalidity. In Microsoft v. i4i, the Supreme Court is considering whether the standard should be lowered to a preponderance-of-the-evidence – especially in situations where the invalidity argument was not considered by the patent examiner during the original prosecution of the patent application.

a)    From a policy perspective, how should the Supreme Court rule?

b)    Does it make a difference that third-parties can request reexamination of an issued patent?

Patent Law Final Exam - Part 1

Question 1.

On May 1, 2005, Mr. Suresh received an e-mail from a friend warning against eating with disposable bamboo chopsticks. The problem, according to the e-mail, was that bamboo chopsticks were saturated with cariogenic chemicals to preserve and whiten the material. A solution to the problem immediately came to Suresh based on his job as a dental hygienist using UV LASER technology to whiten and preserve teeth. Suresh surmised that bombarding raw bamboo sticks with a high-intensity UV LASER could accomplish the preservation and whitening goals without the use of problematic chemicals. The next evening, Suresh tested his ideas using the UV LASER at his employer's office (the dentist). That evening, Suresh made six sets of prototype LASER irradiated chopsticks and placed them on a shelf in the employee break-room. Over the next six-months, Suresh would occasionally test the prototypes to see if they retained their color and germ resistance. On a couple of occasions during that time, he even used the prototypes at a Chinese restaurant downtown. His interest then waned in the project for several months.

In December 2006, Suresh was fired. He then decided to move forward with his chopstick business. Unfortunately, by that time, someone else (StickCo) had separately invented the same thing and already had a product on the market (with considerable commercial success). Suresh quickly filed for patent protection and in April 2008, the PTO granted Suresh a utility patent with claims directed to both "a product comprising a UV LASER treated bamboo chopstick" and also "a method comprising treating raw bamboo with a UV LASER in a manner sufficient to whiten and preserve the material". Suresh then sued StickCo for patent infringement.

In the end, it turned out that the e-mail scare was a hoax. Ordinary chopsticks are actually cheaper to produce and safer to use than Suresh's irradiated chopsticks.

1. Did Suresh's post-invention activities trigger the statutory bar under 35 U.S.C. §102(b) and render the patented claims invalid?
2. Based on the prior state-of-the-art discussed, is Suresh's invention nonobvious?
3. Does Suresh's former employer have any claim to rights in the invention?
4. Assume that StickCo can prove an invention date of January 1, 2006. Does StickCo have a credible argument under 35 U.S.C. §102(g) that Suresh's patent is invalid?
5. Assuming that StickCo's version of the chopsticks infringe Suresh's patent, but that StickCo does not have enough money to pay the damages. What other parties could be held liable for the infringement?
6. Two other similar products were recently released by another manufacturer: (i) A UV LASER treated chopstick that is dark brown in color and that is also chemically treated; (ii) a chopstick that is treated with a BLUE-VIOLET LASER rather than an ULTRA-VIOLET (UV) LASER. Do either of these infringe Suresh's patent?
7. Patent Office rules require inventors to provide the USPTO with "all information known to be material to patentability." 37 C.F.R. § 1.56. Did Suresh make a mistake by failing to tell the PTO how he came-up with his invention?
8. When Suresh filed his patent application, the only LASER he had used was the UV LASER from his dentist's office. However, he was confident that other LASERs would probably work just as well, if not better. (i) In the patent application should he have discussed the dentistry LASER? (ii) What about the other (untested) LASERs? (iii) Could Suresh broadly patent "the use of UV LASER radiation to treat an eating utensil, without being limited to the specific machinery or parts of machinery described in the foregoing specification?"
9. We often think of patents as intended to encourage innovation. Does the granting of patent rights in situations like this (serendipitous invention) do anything to encourage innovation? You might distinguish between this case and one where the patentee conducted an expensive research and development program before inventing.
10. Are there other patent law issues that should concern Suresh? (Limit your discussion to at-most two additional issues)?

Missouri Law Review Patent Law Writing Competition: $5,000 Award

The Missouri Law Review announces a student writing competition in association with its annual Symposium to be held February 25, 2011, at the University of Missouri School of Law. Submissions should fit with the symposium topic of "The Patent Jurisprudence of the Court of Appeals for the Federal Circuit." The winner will be awarded a $5,000 cash prize.

Eligibility: Submissions should follow the format of a case note or law summary cited in Bluebook style and must be submitted by January 14, 2011, via email to umclawrev@missouri.edu with the subject line "Patent Law Writing Competition." The submission must be between 20 and 30 pages and have at least 125 footnotes. The submission should be unpublished, and the author must be willing to publish the work in the Missouri Law Review. The competition is limited to current law students studying in a U.S. J.D. program. Current members of the Missouri Law Review are excluded from participating. Send questions to the Missouri Law Review at umclawrev@missouri.edu.

Deadline: Friday, 1/14/2011

Award: $5,000

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]

Law Review Case Note Topics for 2010-2011

Dear Law Review Editors: Please send me a note (dcrouch@patentlyo.com) to let me know about patent law focused articles that you publish in your journal so that I can highlight them on Patently-O.

Student Note Topics: Here are some suggestions for patent law focused law review topics for 2010-11 that I would like to see for my own edification. Please send me an e-mail if you choose one of these.

• Transnational Infringement: Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc. (Fed. Cir. 2010). When is a patent "on sale" or "sold" in the US? This note is likely to be published because its subject matter relates to Deep-sea Horizon. http://www.patentlyo.com/patent/2010/08/transocean-v-maersk-speeding-up-deepsea-drilling.html
• Expanding the Printed Matter Exclusion: King Pharmaceuticals, Inc. v. Eon Labs, Inc. and Elan Pharmaceuticals, Inc. at http://www.patentlyo.com/patent/2010/08/ignoring-non-patentable-elements-while-judging-novelty.html
• Hyatt v. Kappos will come out soon. That en banc decision will focus on the admissibility of new evidence when a patent applicant files a district court civil action to challenge the PTO's refusal to grant a patent. http://www.patentlyo.com/patent/2010/02/en-banc-hyatt-kappos-145.html
• Antitrust and Patent Misuse: Princo Corp. v. International Trade Commission and U.S. Philips Corp. (Fed. Cir. 2010) (en banc) (holding that an anticompetitive agreement between companies to suppress a given technology would not constitute misuse of a patent covering an alternative technology being promoted by the companies). I might consider whether antitrust law is sufficient to deter this type of alleged collusive behavior. http://www.patentlyo.com/patent/2010/08/federal-circuit-holds-line-on-patent-misuse-defense.html.
• Expanding the Scope of "Secret" Prior Art: In re Giacomini (Fed. Cir. 2010). In an important case, the Federal Circuit has expanded the scope of so-called 102(e) "secret prior art." Under the decision, a US patent or published application will be considered prior art as of the filing date of its qualifying provisional application. The case is important because of the large number of provisional patent applications being filed each year. http://www.patentlyo.com/patent/2010/07/federal-circuit-extends-the-scope-of-102e-secret-prior-art.html
• Suing Individuals for Patent Infringement: Wordtech Systems, Inc. v. Integrated Networks Solutions, Inc. at http://www.patentlyo.com/patent/2010/06/employee-and-officer-liability-for-inducing-infringement.html
• Written Description Requirement and Post-Ariad Judicial DecisionMaking. I would locate all decisions that cite the 2010 en banc decision in Ariad, write about those decisions and try to uncover whether the separate written description requirement was important to the outcome. See http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1554949
• A qualitative analysis of inequitable conduct pleading pre/post Exergen v Wal-Mart. For this study, I would uncover 100+ pleadings that allege inequitable conduct and see whether pleading style has changed. In Exergen, the CAFC emphasized the heightened pleading requirement for defenses of inequitable conduct. http://www.patentlyo.com/patent/2009/08/fraud-on-the-patent-office-federal-circuit-emphasizes-rule-9b-heightened-pleading-requirement-for-defense-of-inequitable-c.html.
• Some of the ideas from 2009 and 2008 have not been taken.

Tags: AMP,+Hyatt,+102(e)

Guest Post: Keys to Hiring Newly-Minted Patent Lawyers

by Thomas G. Field, Jr., Professor, University of New Hampshire (UNH) School of Law (formerly Franklin Pierce Law Center)

There is much ado about generalist and specialty law school rankings, but it is difficult to understand why they should make much difference in hiring new, much less experienced, patent lawyers.

Technical training figures prominently too, but that is difficult to factor in. As has been discussed on this blog, two others and I published a paper concerning the correspondence between the percentage of attorneys with formal training in computer science (our focus) or engineering and the percentage of computer-based patents issued. There we argued, as I strongly believe, that the PTO’s discrimination against computer science graduates is irrational.

The paper also implies that one needs formal training in a particular art to competently draft and prosecute applications in that art. Most patent attorneys would reject the idea. Despite co-authorship, I do too.

I regard the most important technical criteria to be attorneys’ (or agents’) capacity to be educated by inventors and, as one of our alumni put it several years ago, function as a mediator between inventors and examiners. In that regard, I recall the late Robert Shaw. Prior to coming to Pierce in the mid-1970s, where he taught claim drafting and prosecution until he retired, Bob was a full-time attorney for MIT. It’s difficult to imagine that he could have had much expertise with regard to the wide range of applications drafted and prosecuted on behalf of an incredibly sophisticated faculty. Yet there is no reason to doubt the quality of his work for people there or at other universities. I do not envy those who attempt to judge such capacity from college transcripts and unrelated work experience.

Moving from technical to legal training, I regard the most important criteria to be the capacity to identify what decision makers will find critical, spot flaws in opponents’ positions and to argue effectively for their own. Regarding potential clerks, Justice Scalia famously stated, “I’m going to be picking from the law schools that . . . admit the best and the brightest, and they may not teach very well, but you can’t make a sow’s ear out of a silk purse. If they come in the best and the brightest, they’re probably going to leave the best and the brightest, O.K.?” (as quoted by Adam Liptak, On the Bench and Off, the Eminently Quotable Justice Scalia, N.Y. TIMES, May 12, 2009, at A13. If so, what’s gained from the education? There’s also risk of loss. I was struck by the observation that, “For most of the past fifty years, attending Harvard Law School was a miserable experience for the majority of its students.” Kevin K. Washburn, Elena Kagan and the Miracle at Harvard (2010). It is difficult to see how students would be better off for such an experience — unlikely to be unique.

General ranking may be useful for identifying some of the best and the brightest. But many choose schools based on a variety of other factors including cost, effects on partners, and quality of life. It would therefore seem that indicia of drive and intelligence other than that reflected in decisions of law school admissions committees deserve consideration.

In tough economic times, hiring seems more likely to turn on the skills and knowledge candidates have, rather than what they are capable of acquiring. If so, hires may be based on program rankings. But, as I have pointed out at length in Ranking Law Schools’ Special Programs, 50 IDEA 335 (2010), all rankings are suspect, whether based on the number and fame of faculty, the number of specialty courses offered or something else. In that article, at 344, I ultimately wonder whether “anyone other than a fool would favor one candidate over another based on reputations of professors neither candidate may have seen or lists of courses neither may have taken.” You might too.