Intellectual Property Law

Supreme Court Prepares to Chop Down "Clear and Convincing" Standard for Proving Patent Invalidity

Posted on November 29, 2010
In the case of Microsoft Corp. v. i4i Ltd., patentee i4i was awarded a $290M judgment against Microsoft and an order barring the infringing sale of Word in the U.S.  The patent was directed to a method for editing documents using XML, a language that tells a computer how text should appear...

Wednesday Shorts

Posted on November 17, 2010
Not So Fast, One-Click-Patent . . . :  Last month, Amazon scored a big victory when the Federal Court of Canada overturned the Patent Commissioner's decision to refuse a patent to Amazon.com for its ?one click? business method patent (link).   On Monday the federal Department of Justice filed the Notice of Appeal that challenges the Federal Court's ruling (link)...

USPTO Looks to Streamline Appeals by Amending BPAI Rules

Posted on November 16, 2010
Yesterday, the USPTO announced proposed changes to the rules governing ex parte patent appeals before the Board of Patent Appeals and Interferences. (BPAI).  According to Director Kappos, ?we hear often from stakeholders that the patent appellate process is too complicated and burdensome ...

Unbridled "Optimization" Term in Software Patent Claim Leads to Finding of Indefiniteness

Posted on November 10, 2010
Data Retrieval Technology v. Sybase, Inc. et al., No. 3-08-cv-05481 (N.D. Ca., Nov. 8, 2010)DRT sued defendants on patents directed to computer-implemented methods for retrieving information stored in databases without the need for human analysis of the source data...

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Fed. Cir. Removes Limitations on New Evidence in §145 Civil Actions Against USPTO

Posted on November 09, 2010
Hyatt v. Kappos, 2007-1066 (November 8, 2010) (en banc)When Applicants are dissatisfied by a USPTO action, there are 2 avenues for potential relief: (1) appeal to the Federal Circuit, and (2) file a §145 civil action in district court. While an appeal limits review of an application to the evidence of record, §145 actions afford an applicant the opportunity to introduce new evidence after the close of administrative proceedings...

Chisum: Gottschalk v. Benson is a "Failure"

Posted on November 04, 2010
Donald Chisum released an interesting article titled "Patenting Intangible Methods: Revisiting Benson (1972) After Bilksi (2010)" where he cogently points out that most of the problems pertaining to patentable subject matter can be attributed to the Supreme Court's decision in Benson, and that the decision "served noone's interest ...

CAFC Denies En Banc Review of "Distorted" Law of Double-Patenting

Posted on November 01, 2010
Sun Pharma. Ind. Ltd. v. Eli Lilly and Co., No. 2010-1105, (Nov. 1, 2010, Order)Eli Lilly filed a first application describing a new class of chemical compounds having antiviral utility, including the compound named gemcitabine. Thereafter, Lilly filed a continuation-in-part application disclosing but not claiming the anticancer utility of gemcitabine, and on the same day Lilly filed a separate application (ultimately issuing as the '826 patent) having a different inventive entity, describing and claiming the use of gemcitabine to treat cancer...

Commerce Dept. Continues to Drop Hints on Establishing Regional Patent Offices

Posted on October 27, 2010
Secretary of Commerce Gary Locke was in Detroit for an export conference this week and participated in a roundtable discussion with local small business owners at the Detroit Regional Chamber.  Just prior to leaving, Locke dropped a hint that the Dept...

USPTO, EPO Work on Establishing Common Patent Classification System

Posted on October 25, 2010
The USPTO's classification system has been different from the International Patent Classification System (IPC) because (a) the USPTO's classification system came first, and (b) WIPO decided to take a different classification path when developing the IPC...

Blame Canada! Amazon Wins Argument at the CA Federal Court Over "One-Click" Patent

Posted on October 14, 2010
After a decade-plus battle at the Canadian Patent Office and Patent Review Panel, the Canadian Federal Court made the following ruling on business method patents:At its core, the question is whether a ?business method? is patentable under Canadian law...

Legislation Introduced to Curb False Marking Claims

Posted on October 10, 2010
Congressman Bob Latta (R- Bowling Green) recently introduced H.R. 6352, the Patent Lawsuit Reform Act of 2010.If passed, H.R. 6352 would strengthen the vague language to revert back to the pre-Forest Group decision and assess one $500 fine if found guilty of deceiving the public under Section 292 and not allow for the interpretation of being fined for each product on the market...

Does GM Now Have a "Pass" to Use IP From Other Car Makers?

Posted on October 05, 2010
From the abstract of Adam Mossoff's latest essay: "This essay explains how a 2006 court decision arising from the manufacture of the F-22 Raptor fighter jet paves the way for government-owned General Motors to steal intellectual property. In Zoltek v...

Using R&D Tax Credits to Fund Patent Portfolio Development

Posted on October 01, 2010
The Research and Development (R&D) Tax Credit was created by Congress as part of the Economic Recovery Tax Act of 1981 to encourage U.S. industries to invest in R&D activities, and to stimulate innovation through tax incentives...

Bombshell Study: Heavily Litigated NPE Patents Overwhelmingly Lose at Trial

Posted on September 23, 2010
To date, litigated patents were viewed as "strong" patents - the types that defendants were supposed to avoid taking to trial.  Moreover, litigated patents were seen as more valuable, since they managed to survive an all-out attack on validity by a presumably well-financed defendant...

Merely Being a "Sophisticated Company" Does Not Impute an "Intent to Deceive" for False Marking Claim

Posted on September 21, 2010
Herengracht Group LLC v. WM Wrigley, No. 10-21784-CIV (September 16, 2010)Herengracht sued Wrigley for false patent marking under 35 USC 292(a) for the marking of Hubba Bubba Bubble Tape with a patent that expired on May 5, 2008.In the complaint, Herengracht alleged that Wrigley owned the patent and employed the inventors, and thus knew "since at least 1988 that the [] Patent would expire on May 5, 2008...

Patents, Entrepreneurial Performance and VC Financing

Posted on September 20, 2010
Jerry Cao (Assistant Professor, of Finance Singapore Management University) and Po-Hsuan Hsu (Assistant Professor of Finance, University of Connecticut) recently looked at patent data for VC-backed firms in the U.S. from 1976 through 2005 to empirically examine the signaling effect of start-up firms? patents on entrepreneurial performance and financing patterns of venture capitalists (VCs)...

WIPO Report Suggests "Signs of Recovery" in IP Filings and Innovation

Posted on September 15, 2010
A new report by the World Intellectual Property Organization (WIPO) analyzing IP trends in 2008 and 2009 suggests that innovative activity and demand for IP rights dipped during the global economic crisis, but began to recover this year. As the world economy started to slow sharply in 2008, an estimated 1...

Senators Make Last-Ditch Plea to Pass Patent Reform Legislation

Posted on September 15, 2010
"No matter how big a guy was, Nicky would take him on. You beat Nicky with fists, he comes back with a bat, you beat him with a knife, he comes back with a gun, and if you beat him with a gun, you better kill him, ?cause he?ll be coming back and back, until one of you is dead...

USPTO, EPO Announce Extension of Patent Prosecution Highway

Posted on September 13, 2010
The EPO and USPTO today announced that they intend to extend the trial period for the Patent Prosecution Highway (PPH) Program until January 28, 2012, effective October 2010. This is the second extension of this pilot program between the two examining authorities...

Lemley on Fixing the U.S. Patent Office

Posted on September 08, 2010
What WON'T work:Preventing Fee Diversion:  "[S]topping fee diversion is hardly a panacea. In the last several years, the UPTO has been fully funded ? that is, Congress didn?t divert fees.  Nonetheless, the backlog grew.  The addition of 10-­20% of operating revenue wasn?t enough even to enable the PTO to hold steady...

CAFC: Dislosure That Merely Allows PHOSITA to "Envision" the Claimed Invention Fails Written Description

Posted on September 07, 2010
Goeddel v. Sugano, No. 2009-1156 (September 7, 2010)This case is directed to an interference between Goeddel and Sugano on inventions relating to modified DNA that codes the 166 amino acid sequence of mature hFIF (Human Fibroblast Interferon).  At the USPTO, Sugano was given priority based on a Japanese application filed in 1980...

"Visualize" Patent Statistics Through New USPTO Site

Posted on September 07, 2010
The Office announced today the launch of the beta version of a USPTO Data Visualization Center on its Web site that introduces the"patents dashboard."  This tool is intended to give the public access to traditional measures of pendency as well as several new pendency tracking measures...

USPTO Issues Updated KSR Guidelines on Obviousness

Posted on September 02, 2010
The USPTO recently published a 15-page notice updating the 2007 KSR Guidelines.  The update reviews all of the most relevant Federal Circuit caselaw (over 20 cases) dealing with obviousness since KSR, and distills the rulings down to a reader-friendly format that concludes each case with a handy "teaching point...

Licensing Executives Society Annual Meeting in Chicago: Sept. 26-29

Posted on September 01, 2010
The LES is expecting over one thousand of the world?s leading intellectual property (IP), licensing and business development professionals a the upcoming Licensing Executives Society (USA & Canada), Inc., Annual Meeting at the Chicago Sheraton Hotel & Towers September 26-29...

CAFC: "Any Person" Has Standing To Assert False Marking Claim

Posted on August 31, 2010
Stauffer v. Brooks Brothers, Inc., 2009-1428 (Fed. Cir., August 31, 2010)Stauffer purchased bow ties manufactured by Brooks Brothers, and subsequently launched a qui tam action under 35 U.S.C. § 292 alleging that Brooks Brothers had falsely marked its bow ties, based on expired patents that were listed in the markings...

Can The Actions of a Blog Be a Basis for Getting Costs in an EPO Opposition?

Posted on August 27, 2010
Mikkel Hippe Brun, who operates the blog Schemaworks, writes about various technical, policy and patent issues issues surrounding the IT industry.  Recently, he became aware of a patent directed to a "Communication Routing Apparatus."  In a nutshell, the patent describes a middleware product (e...

Arti Rai Departing From The USPTO

Posted on August 27, 2010
Hal Wegner has just broke the news that Arti Rai, Administrator for External Affairs, is leaving the PTO to an unspecificed position that has not been announced by the government.As Administrator for External Affairs, Rai served as a policy adviser to the Under Secretary of Commerce for Intellectual Property and oversaw the office's work with Congress on major legislation to reform patent law and practice, coordinate informational and educational events on piracy and counterfeiting, and implementing international intellectual property treaties...

USPTO's "Green" Technology Fast-Track Program Off to a Slow Start

Posted on August 27, 2010
Last December, the USPTO launched a pilot program to accelerate the examination of certain ?green? technology patent applications.  Under the pilot program, for the first 3,000 applications related to green technologies in which a proper petition is filed, the agency will examine the applications on an accelerated basis...

Advertising-Based Content Distribution Patent Fails Bilski Test in District Court

Posted on August 24, 2010
Ultramercial, LLC v. Hulu LLC, No. CV 09-06918 (C.D. Cal., August 13, 2010)Ultramerical brought suit against Hulu for alleged infringement of a patent directed to distributing copyrighted products over the Internet.  Specifically, the ('545) patent allows Internet users to view copyrighted material free of charge in exchange for watching certain advertisements...

BPAI's "Administrative Estoppel": Untraversed PTO Findings May Be Barred in Later PTO Proceedings

Posted on August 19, 2010
Ex Parte Smith, Appeal No. 2009-014595 (BPAI, Aug. 17, 2010)Smith filed a patent application in 1998 directed to a method and system for securing passwords and personal identification numbers.  In 2001 a continuation was filed, and later that year, a CIP was filed which ultimately issued as the '336 patent...

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