Intellectual Property Law

CAFC: Overseas Contract Requiring Delivery and Performance in the U.S. Constitutes a "Sale" under Section 271(a)

Posted on August 18, 2010
Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA Inc., No. 2009-1556 (August 18, 2010)Transocean sued Maersk on patents relating to an improved apparatus for conducting offshore drilling.  The lower court granted summary judgment of noninfringement in favor of Maersk...

BPAI Informative Opinion Addresses "Broadest Reasonable Interpretation"

Posted on August 17, 2010
Ex Parte Givens, Appeal 2009-003414 (BPAI, August 6, 2009)While the application was decided over a year ago, the USPTO has decided to publish the decision as an informative opinion, presumably as an attempt to push back on the practice of applying a "broadest reasonable interpretation" too liberally...

RIP Patent Reform 2010?

Posted on August 17, 2010
"I used to be indecisive; now I'm not sure."      - AnonymousWell, in the on-again-off-again world of patent reform, it appears that Congress has its finger on the "off" switch.  From a recent EE Times article:Backing for a draft patent reform bill in the U...

Study: Applicant-Submitted Art is Largely Ignored by Examiners

Posted on August 16, 2010
Patent law both imposes a duty on patent applicants to submit relevant prior art to the USPTO and assumes that examiners use this information to determine an application's patentability. In a recently-published paper, Christopher Cotropia, Mark Lemley and Bhaven Sampat tested the validity of these assumptions by studying the use made of applicant-submitted prior art by delving into the actual prosecution process in over a thousand different cases...

To access this complete feed in the blog feed reader login or register for free.

South Korea Launches "Largest-Ever" Antitrust Probe on Patent Abuse

Posted on August 11, 2010
From Mobile Business Briefing:South Korea?s antitrust body has launched an extensive investigation into possible patent-related abuses by a range of local and foreign-owned IT and telecoms firms, the government said this week. According to a JoongAng Daily report, the investigation is the largest of its kind ever undertaken in the country...

CAFC: Inconsistent Characterization (and Partial Disclosure) of Disputed Prior Art May Lead to Inequitable Conduct

Posted on August 10, 2010
Golden Hour Data Systems, Inc. v. emsCharts, Inc., No. 2009-1306 (August 9, 2010)Golden Hour filed a patent application directed to computerized systems and methods for information management services in connection with emergency medical transport.  When the application was filed, the specification acknowledged that certain technology ("the AeroMed system") was the closest art...

How Do Economic Downturns Affect Patent Litigation?

Posted on August 10, 2010
In the arena of patent litigation, two competing theories attempt to explain how the macroeconomic environment influences motives to file suit. On one hand, the decline in revenues associated with falling demand encourages firms to reduce litigation in IP suits as a method of reducing costs and maintaining profitability...

USPTO's Short-Term Bilski Approach: "Reject First, Ask Questions Later"

Posted on July 07, 2010
After the Bilski decision was rendered by the Supreme Court, the USPTO issued a press release, stating that the PTO "will be issuing guidance further interpreting the decision as soon as possible" and that the PTO will be issuing interim guidance for the examining corps in the meantime...

Leahy Post-Bilski Comments and Patent Reform

Posted on July 01, 2010
As the summer recess approaches, it is all but certain that Congress will (again) postpone efforts to enact patent reform.  Since the manager's amendment (S. 515) was forwarded to the Senate in April, very little has been done in advancing the legislation...

(Finally!) The Bilski Decision Arrives

Posted on June 28, 2010
The opinion is out - as expected, the SCOTUS held Bilski's application was not statutory subject matter:Petitioners? remaining claims are broad examples of how hedging can be used in commodities and energy markets. Flook established that limiting an abstract idea to one field of use or adding token post solution components did not make the concept patentable...

SCOTUS Bilski Decision: "Do No Harm"

Posted on June 28, 2010
Bilski v. Kappos, No. 08?964 (June 28, 2010)The Supreme Court struck down Bilski's patent application directed to a procedure for instructing buyers and sellers how to protect against the risk of price fluctuations.  In its analysis, the Court essentially found that existing statues and case law were sufficient to conclude that the application merely claimed an abstract idea...

Ground Zero: Monday's the Day For Bilski

Posted on June 24, 2010
The Court has voted unanimously to drive patent lawyers crazy. - Tom Goldstein, SCOTUS "Live" Blog reporting, June 24, 2010 10:21 AMNo Bilski opinion today.  The Chief Justice announced that the Court will have its final opinions on Monday (the 28th) and that will close the Term, with the exception of any remaining orders in pending cases...

Rader, Michel Weigh in on the Patent System and Patent Reform

Posted on June 22, 2010
Matthew Dowd, a litigation and appellate attorney in Wiley Rein's Intellectual Property and Food & Drug practices, recently interviewed Chief Judge Randall R. Rader and former Chief Judge Paul R. Michel of the U.S. Court of Appeals for the Federal Circuit...

Fed. Cir.: Deficient Claim for Priority Can't Be Fixed in a Subsequent Continuation

Posted on June 21, 2010
Encyclopaedia Britannica v. Alpine Electronics of America, Case No 09-1544. (June 18, 2010)Britannica alleged infringement of two patents relating to a multimedia database search system for retrieving textual and graphical information.  Both patents stemmed from a series of continuations dating back to 1989 (the '917 application)...

(Sigh) Still no Bilski Decision from SCOTUS

Posted on June 21, 2010
Next batch of opinions are scheduled to be released this Thursday . . . stay tuned.

Patent Holding Company Targets Law Firms and Corporations Over Annuity and Renewal Services

Posted on June 21, 2010
WhitServe LLC v. Benesch Friedlander Coplan & Aranoff LLP et al., 8-10-cv-01639 (D. Md. 2010).WhitServe previously sued Computer Packages, Inc. (?CPI?) on patents relating to online patent annuity and trademark renewal payment service.  WhitServe prevailed with a finding of willful infringement against CPI and was awarded $8...

USPTO Close to Agreement With POPA to Overhaul Performance Review for Examiners

Posted on June 16, 2010
USPTO management has worked with representatives of the patent examiners union (POPA) to establish a proposal to "better align the performance standards for patent examiners with the USPTO?s goals for increasing quality in patent examination and reducing the backlog of pending patent applications...

Still No Bilski Decision from SCOTUS

Posted on June 14, 2010
The Court issue 3 more opinions today; none of them were Bilski.  In an interesting move however, the Court formally announced that more opinions will be issued this Thursday, which is not a regularly scheduled session of the Court.  Stay tuned ...

S.D. Fla. On Motions to Stay Pending Reexamination

Posted on June 14, 2010
Fusilamp LLC v. Littlefuse, Inc., Case No. 10-20528-CIV (June 7, 2010, order)In denying a request to stay litigation in light of a pending ex parte reexamination proceeding, Judge Altonaga stated:District courts have an inherent power to manage their dockets and are in no way required to stay an ongoing litigation pending a patent reexamination...

Two Strykes and You're Out - Fed. Cir. Reverses on Obviousness, and Orders Reassignment to New Judge

Posted on June 09, 2010
TriMed, Inc. v. Stryker Corp., No. 09-1423 (June 9, 2010)TriMed sued Stryker on a patent directed to an implantable device used to set bone fractures.  In the first go-around, the district court found non-infringement as a matter of law, and the Fed...

IPO: Bilski Coming in Next Three Weeks (Really, it Is!)

Posted on June 08, 2010
?Delay is preferable to error.? -- Thomas JeffersonThe IPO reported this morning that the Bilski v. Kappos opinion will "almost certainly be issued on one of the next three Mondays ? June 14, 21, or 28." Chief Justice Roberts stated at the recent Federal Circuit Judicial conference that the Supreme Court expects to issue opinions in all of its argued cases by the end of the current court term, which ends June 28...

Fed. Cir.: Court Will Not Correct Claim Drafting Error to Avoid "Absurdity"

Posted on June 08, 2010
Haemonetics, Corp. v. Baxter Healthcare Corp., No. 09-1557, (June 2, 2010)Haemonetics sued Baxter on a patent relating to a compact blood centrifuge device for separating and collecting components in a liquid such as blood.  The claim at issue (claim 16) recitedA centrifugal unit comprising a centrifugal component and a plurality of tubes, said unit to turn around an axis to separate the components of a liquid, blood in particular, with such plurality of tubes displaying a single tubular component wherein said unit includes:...

Kappos to Propose "Three-Track" Patent Examination Process

Posted on June 03, 2010
From the Wall Street Journal:U.S. Patent and Trademark Office chief David Kappos is proposing a new three-track system for patent applications that would allow applicants to pay an undisclosed amount on top of the standard $1,090 filing fee to jump to the front of the line for expedited reviews...

Wednesday Shorts: New Tools and References

Posted on June 02, 2010
WIPO Gold - yesterday, WIPO launched "WIPO Gold", a free, on-line global IP reference resource that provides simplified access to a broad collection of searchable IP data and tools relating to, for example, technology, brands, designs, statistics, WIPO standards, IP classification systems and IP laws and treaties...

Judge Plager on "Indefiniteness"

Posted on May 26, 2010
Today, the Federal Circuit denied a petition for en banc rehearing in the case of Enzo Biochem, Inc. v. Applera Corp. (2009-1281).One of the issues in this case was the use of the term "not interfering substantially" in the claims of patents directed to the detection and labeling of nucleic acids...

Three Year Period of Silence Leads to Equitable Estoppel

Posted on May 25, 2010
Aspex Eyewear Inc. v. Clariti Eyewear, Inc., No. 2009-1147 (Fed. Cir., 2010)In March 2003, Aspex sent Clariti a letter identifying 4 Aspex patents relating to magnetically attachable lenses and stating "[i]t is our understanding that some of the products sold by you may be covered by the claims of the above mentioned patents ...

The "German Bilski"? DE High Court Declares Client-Server Software Patentable Subject Matter

Posted on May 20, 2010
The Federal Court of Justice ("Bundesgerichtshof") is the supreme court (court of last resort) in all matters of  law in Germany.  Recently, the Court was asked to evaluate whether a client-server system, configured to dynamically generate structured documents, is sufficiently of a "technical nature" to warrant patent protection...

Comprehensive Patent Reform Stalled; USPTO Fee -Setting Provisions to be Passed Tomorrow

Posted on May 17, 2010
Patent reform has stalled yet again in Congress; House Judiciary Chairman John Conyers Jr. recently remarked ?we?re intransigent now. We seem to be stuck.?  Accordingly, The House is scheduled to vote on a bill tomorrow that would give the USPTO new authority to set or adjust patent and trademark fees...

Kappos on the Written Description Requirement

Posted on May 10, 2010
From the Director's latest blog entry:The Ariad decision is important for the Office because written description is a critical tool for ensuring that an applicant does not claim more than she is entitled to claim.  The Office recently conducted a survey of 6,865 final rejections issued over a 4...

Into the Final Stretch: Surveying Bilski's Treatment in the Lower Courts

Posted on May 04, 2010
While everyone continues to fret over the issuance of the SCOTUS Bilski decision (which, by the way, is rumored to be delayed until at least May 17th), Blake Reese has published a timely article that survey's Post-CAFC-Bilski jurispridence in the Federal Circuit and the district courts...

Bloggers, promote your law blog by nominating your blog for inclusion in USLaw.com's Law Blog Directory and RSS Reader. Benefits described.