Intellectual Property Law

The USPTO Assuredly Takes No Blame.

Posted on May 30, 2008
When a deadline is missed or a requirement passes without response, learned patent counsel file a petition seeking relief. Experience with petitions has shown that the contentions that often fail are: blaming the USPTO or claiming that it contributed to the problem, arguing against the unfairness, or expressing surprise or dismay about the situation...

Representing Your Own Exceptional Prosecution, Less Often.

Posted on May 28, 2008
Take an unscientific sample (1 month of CAFC rulings), sum how many times attorneys who prosecuted the application also presented the case in court, and draw nebulous conclusions therefrom (and before the month is over). In May, there were 13 decisions where the attorneys named on the issued patents could be compared with those listed as [...

Rule from 1880?s Against Broadening Amendments In Reexams Is Non-Precendential.

Posted on May 27, 2008
Today’s CAFC ruling in SWBT v. Collins, (5/27/2008), affirms a ruling that, in part, disallows an amendment in the reexam of a patent in litigation. The rule prohibiting broadening amendments in reexam goes back to the Bridgeport Brass, 104 U.S...

Civil to the Crime Bar, But Less So to the Civil Bar.

Posted on May 23, 2008
With regularity, CLE presentations on ethics are devoted to “civility” among lawyers, esp. litigators (that’s an alligator not in an alley), but not much about judging with civility. For many years, and in many vicinages, patent litigators acome with the reputation of being painful to deal with or outright obnoxious...

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Patent Sharks and a Euro Perspective on Circumnavigating Them.

Posted on May 19, 2008
The June issue of Harvard Business Review published the opinion and suggestions of Prof. Henkel of Munich Univ. of Tech., and Asst. Prof. Reitzig of the London Business School, about the pursuits of “patent sharks” in the U.S.  While no mentions of the CAFC, or of any past or proposed patent reforms, was refreshing, the [...

That Uncertain Region Provokes Tension in the Districts.

Posted on May 16, 2008
Ah, the smell of the first nonprecedential opinion and a cup of java to start the morning. In a judgment order, the CAFC affirmed the non-infringement ruling in Airgo v. ArvinMeritor. Was the uncertain region between interpreting the spec and importing elements into the claims mentioned? The CAFC mentioned nothing, but in reply to the [...

Might Free IP Save the Poor from their Lot?

Posted on May 15, 2008
Thomas Berg (University of St. Thomas, St. Paul/Minneapolis, MN - School of Law) has posted the abstract of Intellectual Property and the Preferential Option for the Poor (5 Journal of Catholic Social Thought 193 (2008). As abstracted, Professor Berg’s paper advocates elimination of IP restraints so as to provide benefits, such as patented medicines, to [...

I can CAFC clearly now that No. 2 infringes.

Posted on May 13, 2008
The CAFC acknowledges the need for split brain logic when assessing that ‘branch’ of res judicata known as claim preclusion, as just set forth in Acumed v. Stryker. On claim preclusion standards, the CAFC followed the law of the regional circuit, but when it determined what “claim” is or may be precluded by a prior [...

Still the Most Unclear Region in the Area Between the Described and Claim Embodiments.

Posted on May 08, 2008
In a semantic universe created perfectly, where all lines and orbits are uniform, there would be no need for Markman rulings. Everything would be clear. If that universe was instead, near-perfect, then the interpretive rules would uniformly delineate when the description of the preferred embodiment is done to provide an enlightened interpretation, and done to [...

No Yardwork, it?s the First Saturday in May.

Posted on May 01, 2008
The recent Markman ruling in Toro v. Ingersoll-Rand, 06CV3073 (D. Minn. 4/21/08), came after an earlier order “barring admission of extrinsic evidence, including expert witnesses,” citing, Inpro II, 450 F.3d 1350, 1357. No one apparently qualified as a hypothetical person of ordinary skill in walk-behind mechanics...

Results are Worthy Goals For Experts, but Principled Reasoning is Worthier.

Posted on April 16, 2008
Prior posts dealt with legal experts and the uncertain edge between copyright claims governed by federal law, and distribution contracts subject to state law. In a software infringement, and unauthorized distribution, case, there already may be expert issues of “substantial similarity” on a functional or instruction level...

IP usw. but IT today.

Posted on April 15, 2008
It’s acronyms in April.  Today, PCI compliance, which are the industry standards set by the Payment Card industry.  There may be an incestuous affair between lawyers and the merchants of software and hardware.  A problem gets publicized, the lawyers promulgate laws and regulations, and companies have to buy software and consultants’ services to meet those [...

Anonymity, Deux, Also Ending.

Posted on April 04, 2008
The prior post about challenges to anonymous bloggers and sniping commentors put me in touch with the recent ruling allowing a defamation claim to be pleaded against a commentor to a blawg. The ruling, on Leap Day, in Document Security v. Adler Tech. 03CV6044 (W...

Named as a Derivative Work of Twombly, in 3 notes.

Posted on April 03, 2008
In losing a case over the copyright holder’s 106(3) exclusive right of distribution, one reads every case and all of the legislative history on the subject. Even when studied, the distribution right protected by copyright has fuzzy contours and intangible aspects...

Anonymity Is Not the Best Policy.

Posted on April 01, 2008
It’s old news that the Troll Tracker got outed, and that his employer established a new policy on employee blogging.  Now, the SCOTUS blog, which fulfills the role of quasi-official blog of the U.S. Supreme Court, has announced their policy decision to disable the “comments” section...

RIP.

Posted on March 29, 2008
Lance Corporal David Newcomb, USMC, 22, of Bardstown, KY.  A soldier gives, and gives, and gives. A war takes, and takes, and takes.

A Less Recognized Form of the Bush Stimulus Plan.

Posted on March 27, 2008
Sure, some will get $300 to stimulate our economy, but ‘wait there’s more.’ The Order of the week, thusfar, comes from 3Com v. Realtek, 03-2177 (N.D. Cal.), in the form of a mandate to “furnish daily refreshments for the members of the jury in the above-entitled matter at the expense of the United States effective March 24, [...

How Many Definitions Before Ambiguity Is Reached.

Posted on March 21, 2008
My Google search for ambiguous and “federal circuit” yielded over 81K linked pages (probably including “ambiguous books, click [Amazon] Here,” and “Hotels in Ambiguous, click here”).   Years of ‘going Markman’ on the language has resulted in having one full shelf of dictionaries...

CAFC Goes Nonprecedential to Prescribe Patent Litigation Practice Pointers for Counsel and Judges.

Posted on March 19, 2008
One past ‘practice in the vicinage’ of the SDNY was for a Judge to announce a rule in open court. Only those attorneys who happened to be there that day heard this new, unwritten rule. It worked for those firms that were in court everyday, but for those there occasionally, it could work a hardship...

Some are Experts, Others Just Provide Opinions.

Posted on March 18, 2008
Two points of interest about patent suit experts come out of the pretrial ruling in Seitz v. Envirotech Sys., 4:02CV4782 (S.D. Tex. 3/6/2008). The named plaintiff, apparently, had years of experience running his tankless water-heater company, and also, “twenty years of experience in corporate finance and mortgage banking...

New Matter is Nonprecedential and Unexceptional.

Posted on March 17, 2008
When preparing to argue a case to the CAFC, you may get there early and wander about, and even read from the bulletin board what recent rulings have issued. The nonprecedential ones, with a one-liner per curiam order, create curiousity - what was no meager among the issues presented...

Caution About Case Management Orders ?For Discovery Only.?

Posted on March 11, 2008
Rule 16 scheduling orders “control” further proceedings in a case. Parties may stipulate to Rule 16 limits on discovery, thinking that the final pretrial order will become the governing document at trial. For example, counsel may agree to limits on depositions, which would be unpalatable during trial...

Must Have Been More Original Than The Many Others.

Posted on March 10, 2008
A local TV news anchor, whose on-air name is Catherine Bosley, was a wet T-shirt contest participant in Florida in 2003. She claimed back the photos of her, resigned from her TV job, then registered the photos for copyrights in 2004.  In a prior case, an injunction against use of the photos was stayed on [...

Being a Zealous Advocate Precludes Ratting On a Client.

Posted on March 07, 2008
All the recent furor over the sanctions imposed on the client and counsel in the Qualcomm v. Broadcom (05CV1958 S.D. Cal.) took a real turn. The Magistrate ruled on the sanctions, and now, the Judge has vacated the sanctions as to the objectors. The issue was the “self-defense exception” to the privilege against disclosure of [...

A Method as Novel as Making Silver Jewelry in Mexico.

Posted on March 05, 2008
Patent cases often are easy to spot on PACER, especially from the docket of the N.D. Cal.  The typical format for the style of the case is E-something vs. I-something, or Patent Holding Portfolio LLC vs. Fortune 500 name.  Familiarity with those style conventions almost made me miss a recently-filed patent case styled, American Mexican [...

A Virtual Agent Answered the Phone, and 2 Suits Broke Out.

Posted on March 04, 2008
Maybe it’s just an earmark of impatience, but how annoying is it when your call for service on your insurance or bank business is answered by an “automated attendant.” Imagine being in a noisy, downtown emergency room, and calling for “pre-authorization” approval to have your jaw wired shut, and trying to explain that to a [...

Patent Reform Dayplanner.

Posted on March 03, 2008
Instead of devoting time to reading legislative rumblings about patent reform bills, or perusing lenghty studies about ‘bad’ patents and scumsucker patent plaintiffs, or searching for some common threads among all the amicus and public-interests commentaries about patent reform, it seems a better use of time to propose some radically simple change to the patent [...

Blue Moon Rises over CAFC.

Posted on February 28, 2008
Whenever a CAFC panel suggests that there is a doctrine of equivalents, it’s like a sighting of the Yeti or the Loch Ness monster.  Usually, they are just teasing with the possibility, writing about it in some non-final appeal - which later returns and the DOE then is slaughtered...

Reconsider State Street, en banc, That?s Big!

Posted on February 15, 2008
Today, your CAFC issued an order for en banc consideration, not a rehearing, but an en banc review, including whether to tie a process to a tangible device or result, and whether to reconsider the State Street and Excel cases on business methods.  That will be very big!  Guess the CAFC likes its role as [...

Behind the Curtain of Non-Precendence - Ampex v. Kodak.

Posted on February 07, 2008
The CAFC used to webpublish only rulings it deemed precedential, but that recently changed. Their publication now of per curiam affirmances gives rise to curiosity as to what made that one case unworthy of anything more wordy. Consider today’s order in Ampex v...

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