Intellectual Property Law

SCOTUS Speaks: Patents May Only be Invalidated Under "Clear and Convincing" Standard

Posted on June 09, 2011
This morning the Supreme Court released it's opinion in Microsoft v. i4i, and provided "clean sweep" support (10-0) that patents may only be invalidated under "clear and convincing" evidence.Held: Section 282 requires an invalidity defense to be proved by clear and convincing evidence...

SCOTUS: Inducement to Infringe Requires "Actual Knowledge" of Patent; "Deliberate Indifference" Not Enough

Posted on May 31, 2011
Global-Tech Appliances, inc. v. SEB S.A., No. 10-6, May 31, 2011 Global Tech, an Hong-Kong appliance maker, sold a deep-fryer to 3rd parties that was an alleged copy of one patented by SEB.  SEB subsequently sued Global Tech for actively inducing purchasers of the fryers to sell or offer to sell them in violation of SEB?s patent rights...

Prosecutors Rejoice! Federal Circuit "Tightens the Standards" En Banc for Inequitable Conduct

Posted on May 25, 2011
Therasense, Inc. v. Becton, Dickinson and Company, No. 2008-1511 (May 25, 2011)Therasense (now Abbott) obtained a patent from the USPTO after a 13-year prosecution history, where the application was repeatedly rejected over a prior Abbott patent.  At one point, Abbott submitted new claims in the application along with a declaration arguing distinctions between the new claims and the features disclosed the prior patent...

To Arms! While Support for Patent Reform Remains Steady, Opposition Starting to Grow

Posted on April 27, 2011
Last week,  David E. Boundy, Vice President, Assistant General Counsel Intellectual Property at a well-known financial services firm, in Boston MA circulated a "dear fellow patent attorney" letter detailing the shortcomings of the "America Invents Act" (posted on the Patent Docs blog), particularly the unnecessary gutting of the grace period...

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How Much Does the "Clear and Convincing" Standard Matter? Study Suggests "Not Much"

Posted on April 19, 2011
In the case of Microsoft v. i4i, some of Microsoft?s amici contended that the clear and convincing evidentiary standard has a ?compelling effect on jurors? and that it is ?tremendously difficult to persuade a jury to go against the decision of the Patent Office...

SCOTUS Hears Oral Arguments on "Clear and Convincing Standard" for Patent Validity

Posted on April 18, 2011
Today the Supreme Court heard oral arguments in the case of Microsoft v. i4i, where Microsoft argued that attempts to invalidate patents using prior art not considered by the USPTO should be judged by a "preponderance of the evidence" instead of the more demanding "clear and convincing" standard...

Secretary Locke Leaving Commerce Dept.?

Posted on March 17, 2011
Press reports indicate that Commerce Secretary Gary Locke is expected to become the next US ambassador to China, taking over for Jon Huntsman.  In a March 9 press release, President Obama statedIn replacing Ambassador Huntsman, I can think of nobody who is more qualified than Gary Locke...

Fed. Cir. Takes False Marking Down Another Peg, Holds Claims Must Be Pled "With Particularity"

Posted on March 15, 2011
In re BP Lubricants UA Inc., Misc. Docket No. 960 (Fed. Cir., March 15, 2011)BP's CASTROL motor oil products are distributed in a unique bottle design for which BP received a design patent.  The patent expired in 2005, but BP continued to mark its bottles with the patent numbers...

FTC Issues 300-Page Report on IP Marketplace; Provides over 50 Recommendations for Improving Patent System

Posted on March 07, 2011
In 2008-2009, the Federal Trade Commission (FTC) held 8 days of hearings across the country on the U.S. patent system and its effect on innovation.  After compiling public comments and conducting additional research, the FTC released a new report today titled The Evolving IP Marketplace: Aligning Patent Notice and Remedies With Competition: A Report of the Federal Trade Commission...

Byproduct of Patent Reform Act - More Satellite Offices (Denver, You May Be Next)

Posted on March 03, 2011
Yesterday, Colorado senators Mark Udall and Michael Bennet slipped in an amendment to S.23, authorizing the USPTO to create "three or more" regional satellite patent offices across the country in the next three years.  The Senate passed the amendment on a voice vote...

Are Patent Damages "Excessive?" New Study Suggests That They Aren't

Posted on February 23, 2011
As part of the ongoing debate over patent reform, Michael Mazzeo, Jonathan Hillel and Samantha Zyontz set out to empirically analyze damage awards from 1995 to 2008 and establish if a systematic or pervasive problem of "excessive" damages exist.From the Abstract: In their arguments for patent reform, proponents have cited cases with very large damage award amounts as evidence of pervasive ?excessive? damages...

POOF! $1.67B Verdict Overturned by Federal Circuit, Patent Invalidated Over Written Description

Posted on February 23, 2011
Centocor Ortho Biotech Inc et al v. Abbott Laboratories et al., No. 2010-1144 (Fed. Cir., Feb. 23, 2011)  In 2009, Johnson & Johnson's biotech unit Centocor was awarded a $1.67B damages award for infringement of a patent on a genetically engineered antibody that blocks the action of a type of immune system cell ("TNF" or tumor necrosis factor)...

Wednesday Shorts - Patents and Politics

Posted on February 16, 2011
Patent Reform Now Part of Snappy-Sounding Agenda - as part of a rebranding strategy, patent reform is being packaged in the Senate as part of a larger "competitiveness agenda" (or "innovation agenda," depending who you ask) that includes bills to expand/renew research and development tax credits, advance job-training and worksharing, develop a Clean Energy Deployment Administration and strengthen cybersecurity...

Lawmakers Approve Plans for "EU Patent"

Posted on February 15, 2011
Since about 2000, lawmakers have made numerous attempts at creating an "EU patent" that is more streamlined and efficient than the existing regime.  Currently, the EPO is not part of the EU, and includes 38 member countries.  When applications issue from the EPO, each application gets partitioned into a bundle of patent applications that need to be prosecuted in each respective country...

Empirical Study on Willfulness Post-Seagate - The More Things Change, The More They Stay the Same

Posted on February 14, 2011
When the In re Seagate decision was issued by the Federal Circuit in 2007, the court set a higher threshold for demonstrating willful infringement in patent cases and introduced a two-part test for willfulness:[T]o establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent...

Patent on "Collateralized Loans" Survives Bilski, Despite Failing the MOT Test

Posted on February 09, 2011
H&R Block Tax Services, Inc. v. Jackson Hewitt Tax Service, Inc., 6-08-cv-00037 (E.D. Tex., February 2, 2011)During litiation, Jackson Hewitt (JH) challenged numerous patents asserted by H&R Block, alleging that they were directed to non-statutory subject matter, and thus unpatentable under 35 U...

Tell the White House (Directly!) How "Obstacles to Innovation" Can Be Removed

Posted on February 09, 2011
The White House has started a great new program called "Advise the Advisor," where a member of the President?s senior staff posts a short video on issues being considered by the White House.  In turn, the public gets an opportunity to post advice, feedback and opinions about key issues (provided your post is 2500 words or less)...

CAFC Note on Incorporating Information By Reference

Posted on January 27, 2011
Fifth Generation Computer Corp. v. IBM, No. 2010-1201 (Fed. Cir., January 26, 2011) (nonprecedential)On appeal, 5th Generation and IBM tussled over the the construction of the term "root bus controller" in a patent directed to a binary tree parallel computing system...

EPO Filings Up 10% in 2010

Posted on January 26, 2011
In this short-but-sweet news release, the EPO has announced:The EPO received 232,000 European patent filings in 2010, 10% up on the 2009 figure (211,000). 39% of these filings originated from the 38 member states of the European Patent Organisation, 26% from the US, 18% from Japan and 5% from each of South Korea and China...

Consumer Watchdog Alleges Google Has "Inappropriately Benefitted" From Ties to Administration, USPTO

Posted on January 24, 2011
Today, Consumer Watchdog, self-described as "a nonprofit, nonpartisan consumer advocacy organization" sent Rep. Darrell Issa (R-CA) a 32-page report arguing "how Google has inappropriately benefited from its close ties to the Obama Administration."On the "full disclosure" front, Consumer Watchdog has been a longtime (and relentless)  critic of Google, and recently received flak on it's criticism of Google's privacy policies and decision to run a Times Square jumbotron advertisement in September portraying Google as a massive invader of privacy, and caricaturing its ex-CEO Eric Schmidt as a "creepy, high-tech ice cream vendor who profiles children" (link1, link2)...

China Patent Grants up 40%, Filings Up 25% in 2010

Posted on January 19, 2011
Not long after the announcement came out that the USPTO granted a record number of patents in 2010, China's SIPO officially announced today that the number of patents granted in China in 2010 was 40 percent higher than in 2009, receiving over 1.2 million patent applications and approving 814,825 requests among them last year...

If at First You Don't Succeed . . . HR 243 (Re)Introduced In House to Curb False Marking Claims

Posted on January 19, 2011
Earlier this month (Jan. 7), Rep. Robert Latta (R-OH) introduced HR 243 in an attempt to stem the tide of false marking litigation in the U.S.  The legisltation is intended to revert Section 292 back to the pre-Forest Group CAFC decision and assess one $500 fine if an entity is found guilty of deceiving the public through false marking, and not allow entities to be fined for each product on the market...

Thomson Reuters Releases "2010 State of Innovation Report"

Posted on January 13, 2011
Thomson Reuters released their annual "State of Innovation Report," where 12 technology areas were reviewed for patent activity, including:Computers & PeripheralsAutomotiveTelecommunicationsSemiconductorsPharmaceuticalsMedical DevicesPetroleum & Chemical EngineeringDomestic AppliancesFood Tobacco & FermentationAerospaceAgrochemicals & AgricultureCosmeticsTo measure patent activity, Thomson studied the first instance or invention for published patent applications and granted patents in 2010, counting each invention only once, in the country where protection was first sought...

Tech Insiders Pessimistic About Comprehensive Patent Reform in 2011

Posted on January 11, 2011
With the new Congress sworn in, reporters are turning to trade group leaders to see what their views are on upcoming legislation.  While certain "tech-related" bills (e.g. updating the Electronic Communications Privacy Act) are expected to move forward this year,  pessimism abounds for more controversial legislation, such as "comprehensive" patent reform:[I]t may be difficult to pass wide-ranging legislation such as patent reform and some cybersecurity bills introduced over the past two years, with competing interests able to bottle up more controversial pieces of complex bills...

2010 Sees Record Jump In Patents Issued in the USPTO (and IBM Received Almost 6,000 of Them)

Posted on January 10, 2011
While the number of patents issued in 2009 was off from previous years, a recently-published report from IFI Claims Patent Services suggests that 2010 made up for the difference, and then some.  In fact, the USPTO issued an all-time high of 219,614 utility patents in 2010, up 31 percent from 2009, which would be the most significant annual increase on record...

Thursday Shorts

Posted on January 06, 2011
CHINA PUBLISHES AMBITIONS "NATIONAL PATENT STRATEGY" FOR NEXT DECADE:  If you thought China's ascendance in the patent world was impressive over the last ten years, wait 'till you see the next ten, according to a recently published government document...

CAFC Nixes 25% "Rule of Thumb" Application For Estimating Patent Damages

Posted on January 05, 2011
Uniloc USA, Inc. v. Microsoft Corp., No. 2010-1035 (Fed. Cir., January 4, 2011)35 U.S.C. §284 provides that on finding infringement, damages shall "in no event [be] less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court...

*** USPTO Announces First Satellite Office In Detroit ***

Posted on December 16, 2010
"Take him to . . . Detroit!"- Dr. Klahn, Kentucky Fried Movie (1977)Commerce Secretary Gary Locke announced today that the USPTO will be opening a satellite office in Detroit, Michigan.  Detroit is the first of (hopefully) a larger number of satellite offices planned for the agency, and is initially slated to house 100 examiners, plus a smaller number of support and administration personnel...

*** Intellectual Ventures Launches Massive Litigation Across 3 Industries ***

Posted on December 08, 2010
"Gentlemen, you can't fight in here - This is the War Room!         -- President Merkin Muffley (Dr. Strangelove, 1964)For some, this was a surprise.  For most everyone else, it was a matter of "what took so long?"From this morning's newswire:Today Intellectual Ventures ("IV") enforced its rights and filed patent infringement complaints in the U...

PwC Publishes 2010 Patent Litigation Study

Posted on December 07, 2010
PriceWaterhouseCoopers (PwC) recently published its annual 2010 Patent Litigation Study, and this year's publication has some interesting data:?  Despite a small uptick of granted patents in 2009, the number of filed patent actions dropped to 2,744, a decrease of over 6% from 2008...

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