Intellectual Property Law

WIPO Reports 4.5% Drop in PCT Filings For 2009

Posted on February 08, 2010
WIPO reported today that, despite the economic turmoil in 2009, PCT applications experienced a mere 4.5% drop for the year - provisional data indicates that 155,900 applications were filed in 2009 as compared to the nearly 164,000 applications filed in 2008...

D. Del: Only Pre-Litigation Conduct Admitted for Willfulness, Despite Prliminary Injunction and CAFC Affirmance

Posted on February 01, 2010
Cordis Corporation v. Boston Scientific, et al., 1-03-cv-00027 (DED January 28, 2010, Memorandum Order)In the litigation, the court made a preliminary finding of infringement against defendants, which was affirmed on appeal. The accused devices were not taken off the market, however, and the case proceeded to trial based on the court's finding, upon a more developed record, that genuine issues of material fact precluded entry of a summary judgment as to infringement...

Here Comes the Hike: 15% Increase in Fees Proposed by USPTO

Posted on February 01, 2010
From the Wall Street Jornal:Inventors and companies would face a new 15% surcharge on patent fees under the Obama administration's proposed budget, with the funds going to help the U.S. Patent and Trademark Office to "improve the speed and quality of patent examinations...

Attorney Delinquence Excuses 7-Year Delay in Reviving Expired Patent

Posted on January 28, 2010
SprinGuard Technology Group Inc. v USPTO, No. 08-12119 (D. Mass., January 21, 2010, Order)SprinGuard brought an action under the Administrative Procedure Act (?APA?) to seek judicial review of decisions of the Director of the PTO denying SprinGuard?s petitions to reinstate its Patent, which granted in 1999, but expired in 2003 for failing to pay a required maintenance fee...

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PwC Releases 2009 Patent Litigation Study

Posted on January 27, 2010
Each year PriceWaterhouseCoopers (PwC)conducts studies on patents and patent litigation, where the organization analyzes statistics relating to "hot" topics of patent law.  This year PwC looked at nonpracticing entities (NPEs - companies that do not design, manufacture, or distribute products) and their effect on litigation...

CAFC: Terminal Disclaimer Not Valid When Underlying Patent Expired

Posted on January 25, 2010
Boehringer Ingelheim Int'l v. Barr Laboratories, Inc., No. 2009-1032 (Fed. Cir., January 25, 2010)Boehringer is the record owner of the '812 patent, which stemmed from a divisional application and was the third in a chain of related patents, all of which shared a common specification...

USPTO Issues Guidance Docs For Minimizing Non-Compliant Briefs

Posted on January 25, 2010
According to the USPTO, the top 8 reasons why briefs are considered non-compliant:(1)  Missing or defective statement on related appeals and interferences(2)  Missing/defective "Status of Claims" - status of all claims AND an identification of claims being appealed(3)  Status of amendments - status of any amendment filed subsequent to the final rejection(4)  Missing or incomplete "Summary of Claimed Subject Matter" (note: Appellant?s reference to a corresponding PreGrant Publication is not proper)(5)  Missing or incomplete Claims Appendix(6)  Untimely submission of affidavit(s) or evidence(7)  Missing evidence appendix(8)  Missing "Related Proceedings Appendix"View the PTO guidelines page here...

When the Examination Process Goes South

Posted on January 22, 2010
 To those that haven't heard about it, a practitioner became fed up with an examiner when it was apparent that the examination process was being "gamed" for the benefit of the examiner (and the detriment of the applicant).  Not taking it lying down, the practitioner decided to write Director Kappos the following letter:Dear Mr...

Report: District Courts With the Most Patent Filings 2009

Posted on January 20, 2010
LegalMetric, an IP research and analysis company, published its annual list of district courts in which the most patent cases were filed in 2009.  The list is as follows:1. Central District of California2. Eastern District of Texas3. District of Delaware4...

Pharma LItigation Study - Generic Challenges are Many, Successes Few

Posted on January 19, 2010
RBC Capital Markets released a very interesting study on patent litigation in the pharmaceutical industry by analyzing more than 370 cases filed over the last 10 years.  The study concludes that there is "very little downside and huge upside" for generics to take brand manufacturers to court, but also noting that"while patent challenges by generics are extremely common, winning is not...

Was the Federal Circuit Feeling Guilty Over KSR? Study Suggests They Were

Posted on January 14, 2010
District court clerk Ali Mojibi recently conducted an empirical study on the effect of the Supreme Court?s decision in KSR v. Teleflex: The basic approach of the study is straightforward. The author surveyed a large number of cases decided by the Federal Circuit and certain District Courts before and after the Supreme Court decided KSR v...

Patent Portfolios: More Value, Less Volume?

Posted on January 14, 2010
Business Week has been running a series of articles recently on IP and innovation, where they discussed patents and the latest reports on large-business filings in the USPTO.   As previously reported on the 271 Blog, the number of issued patents for 2009 continued to go up, and numerous tech companies enjoyed substantial increases in the number of issued patents (Microsoft enjoying a 43% increase in 2009)...

Foreign Applicants Majority For 2nd Straight Year; IBM Approaches 5K Patents for 2009

Posted on January 12, 2010
IFI Patent Intelligence released their 2009 patent report, where the company found that U.S. corporations received 49 percent of all U.S. utility patents issued in 2009 with the remainder going to foreign firms. This is the second year in a row that foreign companies collectively received more U...

BPAI: Reissue Not Available When Narrowing Contains All Original Patent Claims

Posted on January 05, 2010
Ex Parte Tanaka, Appeal No. 2009-000234 (BPAI, December 9, 2009) (Precedential)When filing for a reissue,  there are two distinct statutory requirements that a reissue oath or declaration must satisfy under 35 U.S.C. § 251. First, it must state that the patent is wholly or partly inoperative or invalid because of defects in the specification or drawing, or because the patentee has claimed more or less than he is entitled to...

(Not So Much of a) Happy New Year For The USPTO

Posted on January 04, 2010
While patent practitioners look for signs of hope and support for an improved USPTO in 2010, Congress is making clear that they won't be doing any favors for the agency this year.  John Schmid of the Milwaukee Journal Sentinel published a report last week claiming that Congress has withdrawn $100M in funds from the Office at the last minute during budget negotiations on December 9...

One Reason Why Improving Patent Quality Won't Solve the "Troll Problem"

Posted on January 04, 2010
From Timo Fisher and Joachim Henkel's paper, titled "Patent Trolls on Markets for Technology - An Empirical Analysis of Trolls' Patent Acquisition":Patent trolls appropriate profits from innovation solely by enforcing patents against infringers. They are often characterized as relying on low-quality patents, an assessment that, if correct, would imply that eradicating such patents would effectively terminate the troll business...

Upcoming Conference: ITC Litigation & Enforcement

Posted on December 15, 2009
The American Conference Institute (ACI) will be holding its 2nd Expert Forum on ITC Litigation & Enforcement Wednesday, February 24 to Thursday, February 25, 2010 in New York.  The conference provides inside, in-depth guidance on this growing critical practice from a faculty of judges, senior ITC officials, and litigators...

UK "Patent Box" Program Slashes Corporate Taxes on Patent Income

Posted on December 10, 2009
The UK is introducing a "patent box" regime that will impose a lower rate of corporate tax on patent income as an attempt to boost to Britain's creative industries.  The government has yet to release details of how the scheme will operate, although Chancellor of the Exchequer Alistair Darling confirmed in his pre-budget speech to the House of Commons on December 9 that patent income (e...

USPTO Launches Patent Quality Improvement Initiative

Posted on December 10, 2009
The USPTO has been establishing procedures for measuring the quality of patent examination and to improve overall patent quality (together with the Patent Public Advisory Committee (PPAC)).  The Office is now seeking help from the public.  From a recent Federal Register Notice:As part of this effort to improve the quality of the overall patent examination and prosecution process, to reduce patent application pendency, and to ensure that granted patents are valid and provide clear notice, the USPTO would like to focus, inter alia, on improving the process for obtaining the best prior art, preparation of the initial application, and examination and prosecution of the application...

Marshall, TX Treating Plaintiffs So-So in 2009

Posted on December 07, 2009
From Michael Smith's Eastern District of Texas Federal Court Practice Weblog:Last Thursday a Marshall jury in Judge Ward's court in Fiber Systems Int'l v. Applied Optical, 2:06cv473 returned a defense verdict on infringement in a patent case . . . I think that's the third defense jury verdict in the district this year in patent cases (two Marshall and one Beaumont), not counting Judge Davis' ruling in favor of Microsoft after jury selection in the Fenner case in March, and Judge Ward's granting of JMOL in defendant's favor at the conclusion of the plaintiff's case in Paradox...

USPTO To Fast-Track "Green" Patents

Posted on December 07, 2009
From today's USPTO press release:WASHINGTON - The U.S. Commerce Department?s Patent and Trademark Office (USPTO) will pilot a program to accelerate the examination of certain ?green? technology patent applications, Secretary Gary Locke announced today...

BPAI Starts Issuing Decisions on NTP/RIM Patent Reexaminations

Posted on December 02, 2009
It's hard to believe, but it has been almost 5 years since the NTP v. RIM case dominated the headlines and became a rallying point for much of the patent reform efforts we have seen to date.  In that case, NTP successfully asserted 5 patents against RIM, receiving judgment in the amount of $53...

SD Cal.: Evidence Relating to Reexamination Proceedings Excluded Fom Trial

Posted on November 30, 2009
Presidio  Components Inc., v. American Technical Ceramics Corp., No. 08-CV-335 (S.D. Cal., November 13, 2009, order)During litigation, ATC submitted a request for reexamination to the USPTO, which was subsequently granted.  Soon thereafter, Presidio moved the court to exclude all evidence relating to the reexamination proceedings, arguing that the evidence is irrelevant and not probative of unpatentability...

How Not to Invent a Patent Crisis

Posted on November 18, 2009
F. Scott Kieff and Henry E. Smith authored a chapter in the book "Reacting to the Spending Spree: Policy Changes We Can Afford" which examines challenges the Obama administration faces today, and in the foreseeable future, and the administration?s planned responses...

ED Tex: Computerized Business Method Patent Fails Bilski Test Under 35 USC 101

Posted on November 17, 2009
H&R Block Tax Services v. Jackson Hewitt Tax Services Inc., No. 6:08-cv-37 (E.D. Tex., Nov. 10, 2009)H&R Block sued Jackson Hewitt in February 2008 alleging infringement of patents relating to "a system and method for distributing payments to individuals and, more particularly, to a system and method for allocating a portion or all of an individual?s payment into a spending vehicle...

Bilski Movie Spoof

Posted on November 11, 2009
For whatever reason, numerous spoofs have been made using the "Hitler rant" scene from Der Untergang ("Downfall"), ranging from US elections, the real estate market, ACORN, etc.Well, a spoof relating to patent law (and more specifically Bilski) has now been made, and it's quite funny, although at times you can't tell if the character playing Hitler is pro-patent or anti-patent ...

Kappos Blog Up and Running on the PTO Website

Posted on November 10, 2009
To read the blog, click here.Also, the blog has been bookmarked on the 271 Blogroll, and may be conveniently accessed there too.Finally, the PTO appears to be warming up more to RSS feeds (or maybe I'm just getting around to noticing it) - the blog has a variety of RSS feeds that the public may use to follow the blog, as well as other news from the PTO site.

Bilski Oral Argument at the Supreme Court

Posted on November 10, 2009
"If you're not confused, you're not paying attention."   -- Tom PetersWell, the analysis has started to roll in, and one thing is certain about the Bilski case: almost no one believes that the claims on appeal will be held patentable.  Not one Justice defended Bilski's method claim directed to hedging risks in commodities trading...

"On the Scene" Reports and Blogs from SCOTUS Bilski Arguments

Posted on November 09, 2009
From Gene Quinn, IPWatchdog:Justice Ginsberg seemed to me to be the most openly hostile toward business methods, as well as the US patent system in general. She mentioned with a certain incredulous attitude the thought of patenting tax avoidance methods, estate planning, how to resist a corporate takeover and how to select a jury...

Which Patent Office Does It Best? Survey Says: "The EPO"

Posted on November 04, 2009
Joff Wild at the IAM Blog reported on an on-going benchmarking survey being conducted by IAM magazine and Thomson Reuters on various patent-related topics.  Recently they asked questions to various professionals regarding patent quality at the larger patent offices...

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