Intellectual Property Law

NPEs Speak at the IP Business Congress 2009

Posted on June 25, 2009
On Tuesday at the IP Business Congress 2009, a breakout session was conducted on NPE's titled "Meeting the NPE Challenge" where NPE business models were discussed. On the plaintiff side, members of Acacia Technologies and Altitude Capital Partners presented their views on the NPE debate, and on the defendant side was RPX Corp...

Report From IP Business Conference 2009

Posted on June 23, 2009
Today, IAM kicked off the IP Business Congress at the Four Seasons Hotel in Chicago. This morning?s sessions were quite packed, with an estimated 370+ people from various sectors of technology gathering to talk about IP valuation, prosecution and enforcement...

PPAC Meeting Sets the Stage for Patent Quality Improvements

Posted on June 18, 2009
The Patent Public Advisory Committee (PPAC) held a Public Session today (link) at the PTO Headquarters to discuss various issues relating to the USPTO and patent practice. One of the big topics during the meeting was patent quality, which was addressed by Marc Adler(member, Andrew Hirshfeld, Acting Deputy Commissioner for Patent Examination Policy)...

David Kappos - The Next USPTO Director

Posted on June 18, 2009
Comment Of Senator Patrick Leahy (D-Vt.), Chairman, Senate Judiciary Committee, On The Designation Of David J. Kappos To Be Undersecretary Of Commerce For Intellectual Property And Director Of The U.S. Patent And Trademark Office June 18, 2009 ?I am pleased that the President has announced his intent nominate David J...

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USPTO Website Undergoing a Facelift

Posted on June 16, 2009
From the USPTO's new "Beta" website:The USPTO is pleased to announce the beta test release of its new Web site. The new site has been redesigned to improve the look and feel, as well as to enhance the user experience with improved navigation. The USPTO's goal is to make the Web site technologically up-to-date, user-friendly, and responsive to customer feedback...

Bilski at the BPAI - What a Mess (Part 1)

Posted on June 16, 2009
SCOTUS review notwithstanding, the process of determining patentable subject matter after Bilski has become a weird, metaphysical endeavor. It has gotten to the point that a given claim may receive 4 different interpretations from 4 different people, and each of them could be arguably correct...

"Patent Reform: Damages" Audio Session

Posted on June 15, 2009
UCLA Law School professor Doug Lichtman continues his excellent "IP Colloquium" audio series with a new installment titled "Patent Reform: Damages." The show covers the question of how, if at all, Congress should change the way courts calculate patent damages...

IAM IP Business Congress Converges on Chicago June 21-23

Posted on June 15, 2009
Next week, hundreds of patent practitioners, analysts and executives - including Chief IP Officers from Fortune 500 companies, heads of IP at other major companies, global IP thought leaders and senior policy makers - are gathering in Chicago for two days of top-level discussion at the "IP Business Congress 2009...

Distric Court Warns that "Patentee's Time For Trolling" Will End Without More Definite Infringement Contention

Posted on June 11, 2009
Diagnostis Systems Corp. v. Symantec Corp. et al., SACV 06-1211 DOC (C.D. Cal., June 5, 2009 Order) (Nakazato, A.)DSC is a wholly-owned subsidiary of Acacia Research Corporation (?Acacia?), and both entities are in the business of acquiring, licensing, and enforcing patented technologies...

Congress Introduces IP Protections for Foreign Climate Change Agreements

Posted on June 11, 2009
Lat night the House voted overwhelmingly to establish new U.S. policy that will oppose any global climate change treaty that weakens the IP rights of American "green technology." The measure is part of the Foreign Relations Authorization Act (H.R.2410) and reads, in part, as follows:SEC...

Looking at the Most-Litigated Patents

Posted on June 10, 2009
John Allison, Mark Lemley & Joshua Walker continue to mine information from Stanford's IP Litigation Clearinghouse and have come up with a new study titled "Extreme Value or Trolls on Top? The Characteristics of the Most-Litigated Patents." The authors sifted through mounds of data to identify the patents litigated most frequently between 2000 and 2007, and compare those patents to a control set of patents that have been litigated only once in that period...

The Quest For Managerial Control at the USPTO - Is Fee Regulation the Answer?

Posted on June 08, 2009
Despite numerous efforts to improve the U.S. patenting process, the PTO is largely seen as a struggling agency that continues to sink deeper into a managerial hole. Congress explicitly gave the PTO rulemaking authority under section 2(b)(2) of the Patent Act, but, as recently demonstrated in the Tafas v...

Tafas, GSK File Petitions For En Banc at the CAFC

Posted on June 04, 2009
I'm on travel this week, and have had very little time to post, so apologies in advance for the brevity . . .Tafas, GSK filed petitions for en banc rehearing. From the Tafas brief, the questions presented :1. Does the standard "foreclose effective opportunity to present patent applications for examination" or "effectively foreclose[] [applicants] from obtaining patent rights to which they are entitled" comport with United States Supreme Court and Federal Circuit precedent classifying "substantive" rules as those which cause a change in existing law or policy affecting individual rights and obligations?2...

SCOTUS Grants Certiorari for Bilski

Posted on June 01, 2009
Bilski v. Doll, No. 08-964 (Supreme Court 2009)CNNMoney.com: "US Supreme Court To Hear Case On Patents For Business Methods" (link)Bloomberg.com: "Business-Method Patents Will Get U.S. Supreme Court Scrutiny" (link)Legal Times Blog: "Supreme Court Will Hear Bilski Patent Case" (link)See Patently-O listing of briefings, arguments, etc...

Waiting on the Naming of USPTO Director

Posted on June 01, 2009
Back on April 30, reports started to surface that Secretary of Commerce Gary Locke has announced that he has chosen the next Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office, and that the chosen candidate was "being vetted...

Process Requiring Machine Doesn't Necessarily Satisfy 35 USC 101

Posted on May 29, 2009
Every Penny Counts, Inc. v. Bank of America Corp., 2-07-cv-00042 (M.D. Fla. May 27, 2009, Order) (Magnuson, J.)Plaintiff Every Penny Counts (?EPC?) received patent number 6,112,191 (the ?191 patent?) in 2000. This patent claims a system whereby consumers can save and/or donate a portion of a credit or debit transaction...

Ranking the Top Patent/IP Blogs

Posted on May 29, 2009
Gene Quinn over at IP Watchdog is ranking the top patent/IP blogs. Feel free to pop over and let Gene know (1) your favorite patent/IP blog, and (2) other patent/IP blogs you read. Voting will continue through the end of June 2009, where the results will be tabulated and reported sometime at the beginning of July 2009...

Injury Must Be ?Concrete and Particularized? For Standing In False Patent Marking Action

Posted on May 27, 2009
Stauffer v. Brooks Brothers Inc., 08-cv-10369 (SDNY, May 14, 2009)35 U.S.C. § 292 prohibits anyone from marking an ?unpatented article? with words ?importing that the same is patented, for the purpose of deceiving the public.? Additionally, section 292 further provides that ?any person? may sue for damages, and if damages are imposedunder the statute ("not more than $500 for every such offense?), the person suing is to receive one-half and the United States is to receive the other half...

. . . Try and Try Again - Congress Makes Another Attempt to Ban Tax Strategy Patents

Posted on May 26, 2009
Representatives Rick Boucher (D - Va.), and Bob Goodlatte (R - Va.) introduced legislation last week aimed at prohibiting patents on "tax planning methods." Introduced on May 21, 2009, H.R. 2584 seeks to amend title 35 of the U.S.C. by adding the following:(1) UNPATENTABLE SUBJECT MATTER...

Will the PTO Continuation Rules Find Support at the Supreme Court? Some Are Saying "Absolutely"

Posted on May 21, 2009
Donald Zuhn from the Patent Docs Blog is reporting on various events from this year's BIO Convention. On Wednesday, BIO held session on "A Model Patent Office for the Future -- Promoting and Protecting Investments in Innovation," where various leaders in the patent community discussed issues pertaining to the improving the PTO...

CAFC Rules En Banc: Terms in Product-by-Process Claims are Limitations in Determining Infringement

Posted on May 19, 2009
Abbott Laboratories v. Sandoz, Inc., (Fed. Cir. 2009) (en banc in part) 07-1400While considering an appeal of a claim construction ruling from the Eastern District of Virginia, the court suddenly found itself faced with a dilemma regarding the construction of certain product-by-process claims: the plaintiff argued that the district court erred in construing the process steps of the claims by using rule in Atlantic Thermoplastics, 970 F...

Short Note on Patentability of Product-by-Process Claims

Posted on May 19, 2009
The CAFC's ruling in Abbott clarified that infringement of a product-by-process claim will occur only when a product meets all of the process limitations recited in the claim. One would presume that the corollary - patentability - would require similar consideration...

Judge Michel Speaks About "Junk Patents", Damages, Trolls, and the PTO

Posted on May 15, 2009
Last December, Chief Circuit Judge Michel gave the keynote address at the FTC hearings on "The Evolving IP Marketplace", where Judge Michel addressed the state of patent law and patent reform. Frankly, it's one of the most sober and rational patent reform speeches in recent years, and I thought it would be worthwhile to help distribute a transcript of the speech...

District Court Lets 24% Royalty Stand In Damage Calculations

Posted on May 14, 2009
Wyers v. Master Lock Co., 1-06-cv-00619 (COD May 12, 2009, Order)Plaintiff successfully asserted that Master Lock infringed four patents relating to barbell-shaped locks with removable sleeves, and the jury awarded $5.35M in damages as a reasonable royalty...

Everything You Ever Wanted to Know About the Current State of Patents and Patent Law

Posted on May 13, 2009
Imagine a "who's who" list of patent scholars, practitioners, in-house counsel, government officials, IP brokers and policy makers - who were all placed in a single room with a microphone for 6 full days to speak individually about their experiences and opinions on various aspects of patent law...

Defensive Patenting and Deferred Examinaton: Lessons From the German Patent Office

Posted on May 12, 2009
There has been a renewed interest in deferred examination for the USPTO, primarily because (a) it appears to enjoy some success overseas, and (b) the current backlog of pending cases at the PTO are at unsustainable levels. As many institutional patent filers recognize, a fair percentage of yearly filings are almost exclusively defensive, i...

USPTO Reform at WIPO: New PCT Procedures Being Proposed for "PCT II"

Posted on May 11, 2009
At the May 2008 session of the Working Group, the International Bureau (IB) presented a paper titled "Enhancing the Value of International Search and Preliminary Examination Under the PCT" (PCT/WG/1/3), where the paper addressed shortcomings of the PCT to exploit work product of various offices...

Video: Intel, Startups Debate Patent Reform Efforts

Posted on May 07, 2009
Recently, Intel Corp.'s chief patent counsel David Simon and entrepreneur Steve Perlman faced off in a debate on patent reform yesterday, where their views showed a wide gap between the opinions of big corporations and startups over pending patent legislation, and especially apportionment of damages and first-to-file...

BPAI Precedential Opinion: Software "Means" Must Disclose Algorithmic Structure

Posted on May 06, 2009
Ex Parte Catlin, Appeal 2007-3072 (BPAI, February 3, 2009) Precedential OpinionThe claimed invention was directed to a method for implementing an on-line incentive system at a merchant's web site. The application contained a means-plus-function recitation in the claims:1...

Patent Valuation Practices of Europe's Top 500

Posted on May 05, 2009
Martin A. Bader and Frauke Rüther, on behalf of PriceWaterhouseCoopers, surveyed the top 500 patent applicants of the EPO to determine valuation procedures and methods. It has been known for a while now that the management of intangible assets is an important element of strategic corporate management that is constantly increasing in significance...

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