Intellectual Property Law

One Method Feature in Apparatus Claim Destroys Validity

Posted on August 31, 2009
Rembrandt Data Technologies, LP v. AOL LLC et al., No. 08-cv-1009 (E.D. Va., August 2, 2009, order) (B. Lee)Notorious NPE Rembrandt sued AOL and a host of other companies over patents relating to dial-up modem technology. At the summary judgment phase, defendants moved the court to find that one of the claims was invalid under section 112 on the grounds that it is "fatally flawed" for mixing a method and apparatus claim in relevant part, the claim reads:A data transmitting device for transmitting signals corresponding to an incoming stream of bits, comprising:first buffer means for ...

Want to Improve Patent Quality? Tweak the Incentives for Low-Quality Patents First

Posted on August 26, 2009
One of the biggest issues facing patent prosecution today is the notion of "patent quality." Everyone wants "quality" patents, but no one can agree on how such patents may be defined, nor can anyone agree on the best way to achieve an appropriate level of quality across the board...

USPTO Publishes Interim Guidelines for Subject Matter Eligibility

Posted on August 25, 2009
Recognizing that "the state of the law with respect to subject matter eligibility is in flux," the USPTO has published interim examination instructions while waiting for the Supreme Court to decide Bilski. The PTO has indicated that the instructions "supersede previous guidance on subject matter eligibility that conflicts with the Instructions, including MPEP 2106(IV), 2106...

Daily Shorts

Posted on August 24, 2009
USPTO Vows to Cut Pendency in Half - Commerce Secretary Gary Locke affirms that patent pendency rates are "unacceptable." According to Locke, ""[w]e've heard the concerns of America's innovators, and I've directed the PTO to pursue an aggressive agenda to cut the time it takes to process patent applications in half, build the public's confidence and get things right...

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USPTO Looking for Deputy Commissioner For Patent Examination Policy

Posted on August 24, 2009
From the USAJobs Site:DEPUTY COMMISSIONER FOR PATENT EXAMINATION POLICYSALARY RANGE: 117,787.00 - 177,000.00 USD /yearOPEN PERIOD: Friday, August 21, 2009to Monday, September 21, 2009SERIES & GRADE: ES-1220-0/0POSITION INFORMATION: This is a Full-Time General position in the Senior Executive Service...

CAFC Affirms That Patent Ownership (and Standing) Can Vest Through Operation of Law

Posted on August 20, 2009
Sky Technologies, LLC v. SAP AG, No. 2008-1606 (August 20, 2009)Sky's predecessor ("Ozro") executed an IP security agreement, where certain patents were used as collateral to secure loans. Ozro defaulted on the loan and the patents were foreclosed at public auction...

Employee Allegedly Assisted in Bilking $500k From the USPTO

Posted on August 20, 2009
Michael H. Reid, A Fort Washington-area clergyman, has pleaded guilty to conspiring to steal nearly $500,000 from the U.S. Patent and Trademark Office, with possible help from a USPTO employee. From the Washington Examiner:According to court documents, the unnamed patent office employee was a financial analyst who had access to accounts in which customers deposited funds that later could be drawn down to pay application expenses...

Supreme Court Asked to Yank Obviousness From the Purview of Juries

Posted on August 18, 2009
Medela AG v. Kinetic Concepts, Inc. (petition for a writ of certiorari)Question presented: Whether a person accused of patent infringement has a right to independent judicial, as distinct from lay jury, determination of whether an asserted patent claim satisfies the ?non-obvious subject matter? condition for patentability...

Revisiting the Presumption of Validity

Posted on August 17, 2009
Of all the proposed reforms in patent law, one of the most controversial reform measures involves the level of deference courts should give to PTO decisions. More specifically, ever since the Federal Trade Commission's 2003 report (link) on innovation recommended abolishing the presumption of validity of issued patents, a slow but steady measure of support has grown since then (e...

BPAI: Applicants Must Do More Than Recite Missing Features To Traverse Prior Art

Posted on August 12, 2009
Ex Parte Belinne, No. 2009-004693 (10 August 2009) (Informative Opinion)The appeal involved an invention relating to activating services when configuring a "build to order" system. The Examiner rejected the claims as anticipated over a single prior art reference ("Lee"), and provided citations to allegedly disclosed features...

Willful Infringement and Injunctions at the E.D. Tex.

Posted on August 12, 2009
i4i Ltd. v. Microsoft, No. 6:07CV113 (E.D. Tex., August 11, 2009, order) (L. Davis)In May, a jury found that Microsoft willfully infringed i4i's patent relating to the processing of XML documents with custon XML elements, and awarded i4i $200M in damages...

Fed. Cir. Limits Admissibility of Evidence Withheld During Examination at the PTO

Posted on August 11, 2009
Hyatt v. Acting Director, Patent and Trademark Office, No. 07-1066, August 11, 2009Hyatt appealed a decision from the District Court for the District of Columbia that upheld the PTO's rejection of Hyatt's patent as not being supported by adequate written description...

Is The CAFC Pro-Patent? Maybe Not, Claims Study

Posted on August 07, 2009
Manasseh Zechariah, economist and assistant professor at Johnson & Wales University College of Business, decided to take groups of decisions from the CAFC, and run variables related to those decisions through different theoretical models to see what came out...

CAFC (Really) Tightens Pleading Requirements for Inequitable Conduct

Posted on August 05, 2009
Exergen, Corp. v. Wal Mart Stores, Inc., No. 06-1491, August 4, 2009Defendant SAAT appealed the denial of their motion for judgment as a matter of law ("JMOL") after a jury found that SAAT willfully infringed. SAAT also appealed the denial of its motion for leave to amend its answer to allege that the asserted patents are unenforceable due to inequitable conduct...

CAFC Pushes Back on PTO Actions

Posted on August 04, 2009
In Re McNeil-PPC, Inc., 2008-1546, July 31, 2009McNeil owns a patent claiming a tampon for feminine hygiene with a solid fiber core in which the core is denser than the radially projecting "ribs" and the ribs are narrower at their bases than their distal ends...

Kappos onfirmation Hearing Set for July 29

Posted on July 23, 2009
The Senate Committee on the Judiciary has scheduled a hearing on nominations for Wednesday, July 29, 2009 at 10:00 a.m. in Room 226 of the Senate Dirksen Office Building.A live webcast of the hearings will be available here (link)Also, Senate Judiciary Chairman Patrick Leahy has released the committee's completed questionnaire for David Kappos, which reportedly has some interesting information, according to Tech Daily Dose:Kappos details his background, professional affiliations and pro bono work as well as his financials...

The Vendor-Client Relationship

Posted on July 22, 2009
If you haven't seen it yet, it's only a matter of time:

Time To Do Away With "Broadest Reasonable Interpretation?" Paper Says "Yes!"

Posted on July 22, 2009
Dawn-Marie Bey and Christopher Anthony Cotropia published a paper recently titled "The Unreasonableness of the Patent Office's 'Broadest Reasonable Interpretation' Standard," and it's a very interesting look at the PTO's claim interpretation methodology...

Study: Post-Grant Review Could Increase PTO Pendency by 25%

Posted on July 21, 2009
Professor Scott Shane of Case Western Reserve University, released analysis of the impact of proposed post-grant review and expanded inter partes reexamination of U.S. patents. According to Shane, the proposed changes will have the following likely effects:Increase the length of patent pendency...

Doors Are Open: USPTO Officially Launches "e-Office Action" Program

Posted on July 21, 2009
From the USPTO:The Commerce Department?s United States Patent and Trademark Office (USPTO) announced today the implementation of the e-Office Action program following a successful pilot project. Under the program, patent applicants receive an e-mail notification of office communications instead of paper mailings...

USPTO Publishes Latest Reexamination Statistics

Posted on July 20, 2009
The USPTO published the most recent statistics on inter-partes and ex-parte reexaminations, and both reports show that reexaminations continue to grow in popularity, and continue to be effective weapons for challenging validity.Ex-Parte ReexaminationEx-parte filings continue to grow - 2009 is on pace to almost double the number of filings from 5 years ago:2002 - 274 filings2003 - 392 filings2004 - 441 filings2005 - 524 filings2006 - 511 filings2007 - 643 filings2008 - 680 filings2009 - 481 filings (through 6/09)Of these filings, 31% are known to be in litigation...

District Court Awards almost $2.5M In Sanctions For NPE Asserting Unenforceable Patents

Posted on July 20, 2009
Nilssen, et al v. Wal-Mart Stores Inc, et al, No. 1-04-cv-05363 (N.D. Il., June 30, 2009, order) (R. Gettleman)Plaintiff Ole K. Nilssen held a number of patents on compact fluorescent lamps ("CFLs") and exclusively licensed them to his not-for-profit Cayman Islands foundation, plaintiff Geo Foundation, Ltd...

"Patent Marking" Case Against Solo Cup Dismissed in ED Va.

Posted on July 08, 2009
Matther A. Pequignot v. Solo Cup Co., No. 1:07-cv-897 (E.D. Va., July 2, 2009, order) (L. Brinkema) Washington DC patent attorney Matthew Pequignot filed at least two lawsuits against Solo Cup and Gillette (P&G) alleging that the defendants were engaging in "false marking" of their products...

Appeals "Skyrocket" at the USPTO

Posted on July 06, 2009
Law.com issued an article today confirming what most practitioners have known for a while - patent examination has become a stingier process, resulting in more appeals at the BPAI. Over the past year, the PTO reports that appeals have spiked 70 percent...

Fed. Circuit Grants En Banc Review in Tafas v. Doll

Posted on July 06, 2009
The Federal Circuit has granted Tafas & GSK?s petition for a rehearing en banc, which opens the door on the PTO having the ability to restrict the number of continuation applications and claims used in an application. Appellant?s briefs should come due around August 6, and the opposing briefs around August 26...

USPTO News Shorts

Posted on July 06, 2009
USPTO published final rules on PCT procedure - The USPTO has revised the rules of practice in 37 CFR 1.485 on how applicants may make amendments to the claims in an international application. Under the current PCT Regulations, applicants are required to submit replacement pages for only those pages which contain changes, where under the revised PCT Regulations applicants will be required to submit a complete set of the claims when amending any of the claims...

USPTO Posts Selected Material on Bilski

Posted on June 30, 2009
The PTO recently announced that "in view of the high level of interest sparked by the case, the USPTO is posting selected court documents from Bilski v. Doll on this Web site."Currently the site only contains PTO material related to the Federal Circuit Panel Proceedings, Federal Circuit En Banc Proceedings, and Supreme Court Briefs...

ED Tex: Attorney Does Not Have to "Do the PTO's Job For Them" To Negate Inequitable Conduct

Posted on June 30, 2009
Tyco Healthcare Group LP v. Applied Medical Resources Corp., No. 9:06-CV-151 (E.D. Tex., June 26, 2009 Order) (Giblin, K.)Tyco sued Applied Medical for patent infringement. One of the asserted patents was previously subjected to an interference (when the patent was at an application stage), where Tyco argued that the other patent was invalid over a prior art reference ("Yoon")...

Thomson Reuters Publishes "Innovation Hot Spots"

Posted on June 29, 2009
Today, the IP Solutions business of Thomson Reuters published a research paper, titled "Innovation Hot Spots: Mining Patent Data for Tomorrow's Breakthroughs," which tracks unique inventions published in patent applications and granted patents from 2003, 2008 and 2009 to identify technology areas showing the sharpest growth over the last five years...

USPTO Bailout Bill Introduced

Posted on June 25, 2009
From National Journal's "Tech Daily Dose":Senate Judiciary Chairman Patrick Leahy and ranking member Jeff Sessions came to the rescue of the Patent and Trademark Office on Wednesday night when they introduced a bill that will allow the agency to use funds designated for its trademark portfolio to be used to address its growing backlog of patent applications...

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